Case 3:19-cv-05644-SI Document 113 Filed 11/10/20 Page 1 of 4
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`NEODRON, LTD.,
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`Plaintiff,
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`v.
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`LENOVO GROUP, LTD., et al.,
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`Case No. 19-cv-05644-SI
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`ORDER DENYING PLAINTIFF'S
`MOTION TO LIFT STAY
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`Re: Dkt. No. 109
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`Defendants.
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`Plaintiff’s motion to lift the stay in this action is scheduled for a hearing on November 13,
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`2020. Pursuant to Civil Local Rule 7-1(b), the Court determines that this matter is appropriate for
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`resolution without oral argument and hereby VACATES the hearing. For the reasons foregoing
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`reasons, the Court DENIES Plaintiff’s motion to lift stay.
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`BACKGROUND
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`Neodron LTD (“Neodron”) filed this lawsuit on September 6, 2019, accusing Lenovo Group
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`LTD. (“Lenovo”) and Motorola Mobility LLC (“Motorola”) of infringing U.S. Patent Nos.
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`8,102,286 (“’286 patent”), 8,451,237 (“237 patent”), 8,502,547 (“‘547 patent”), 8,946,574 (‘574
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`patent”), 9,086,770 (“’770 patent”), 10,088,960 (“’960 patent”), and 7,821,502 (“’502 patent”). On
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`October 10, 2019, Lenovo and Motorola answered the complaint and asserted counterclaims for
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`declaratory judgement and invalidity of all the asserted patents.
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`On August 27, 2020, the Court granted Neodron’s motion to stay this case pending inter
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`partes review (“IPR”). Dkt. No. 106. The Court ordered the parties to file quarterly joint status
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`reports updating the Court on IPR proceedings and relevant litigation. Id.
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`The parties filed a joint status report on October 1, 2020. Dkt. No. 108. According to the
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`United States District Court
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`Case 3:19-cv-05644-SI Document 113 Filed 11/10/20 Page 2 of 4
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`report, patents ‘286 and ‘502 were denied IPR against Lenovo and Motorola. Id at 1. Defendants
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`did not petition for IPR of patents ‘237 and ‘770. Id. However, patents ‘547, ‘574, and ‘960 are
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`pending IPR. Id.
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`The report also indicated that the patents pending IPR were at various stages of IPR
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`proceedings. Defendants’ petition for IPR of patent ‘547 was granted and joined with a pending
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`IPR of the same patent filed by Samsung Electronics, Ltd. Id. Defendants have until November 13,
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`2020 to answer Neodron’s Patent Owner’s Response. Id. Defendants’ petition for IPR of claims
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`relating to patent ‘574 was also granted. Id. at 2. Neodron is scheduled to file its Patent Owner’s
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`Response by December 7, 2020. Id. Finally, Neodron has until November 12, 2020 to file its Patent
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`Owner’s Response for IPR proceedings regarding patent ‘960. Id. The report stated that Neodron
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`“elects to assert” the patents that were not pending IPR—‘286, ‘502, ‘237, and ‘770—in its current
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`case with the Court. Id. at 1.
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`On October 9, 2020, Neodron filed the instant motion to lift stay. Dkt. No. 109. Lenovo
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`and Motorola fled an opposition on October 23, 2020. Dkt. No. 110. Neodron filed a reply on
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`October 30, 2020, stating that it will not “elect to assert patents ‘502 [or patents ‘547, ‘960 or ‘574],
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`but only patents ‘286, ‘237, and ‘770.” Dkt. No. 111. As of the date of these filings, Neodron has
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`not moved to dismiss, either with or without prejudice, its claims involving patents ‘502, ‘547, ‘574,
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`or ‘960.
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`LEGAL STANDARD
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`“Courts have inherent power to manage their dockets and stay proceedings, including the
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`authority to order a stay pending conclusion of a PTO reexamination.” Ethicon, Inc. v. Quigg, 849
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`F.2d 1422, 1426-27 (Fed. Cir. 1988) (citations omitted). In determining whether to grant a stay
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`pending PTO review, courts consider three main factors: (1) whether discovery is complete and
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`whether a trial date has been set; (2) whether a stay will simplify the issues in question and trial of
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`the case; and (3) whether a stay would unduly prejudice or present a clear tactical disadvantage to
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`the non-moving party. Telemac Corp. v. Teledigital, Inc., 450 F. Supp. 2d 1107, 1111 (N.D. Cal.
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`2006); accord Pi-Net Int'l, Inc. v. Focus Bus. Bank, No. C-12-4958-PSG, 2013 WL 4475940, at *3
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`Case 3:19-cv-05644-SI Document 113 Filed 11/10/20 Page 3 of 4
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`(N.D. Cal. Aug. 16, 2013).
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`DISCUSSION
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`Neodron argues that developments with the IPR proceedings warrant lifting the Court’s stay.
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`Neodron asserts that the stay is not justified by the stage of litigation and would result in undue
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`prejudice to Neodron because of the possibility of stale evidence, faded memories, and lost
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`documents. Dkt. No. 109. Neodron also contends that the stay no longer results in simplification
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`of the case because Neodron will “elect to proceed” with the patents not pending IPR (i.e., ‘547,
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`‘574, and ‘960).
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`Lenovo and Motorola argue that there has been no material change since the Court’s order
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`to stay. Defendants argue that Neodron has not explained how a stay would result in stale evidence,
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`faded memories, and lost documents. Defendants also assert that there has been no change in the
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`stage of litigation. Regarding Neodron’s choice to elect to proceed with patents ‘286, ‘237, and
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`‘770, defendants argue that there would be no simplification in the case because Neodron has not
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`moved to dismiss, with prejudice, its claims involving the patents that are pending IPR.
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`Neodron argues that dismissal with prejudice of the patents pending review is not needed
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`given its election to proceed with patents ‘286, ‘237, and ‘770.
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`The Court agrees with defendants’ arguments and finds that the stay should not be lifted at
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`this time. No discovery or trial dates have been set have been set since the Court’s order to stay the
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`case in August 2020. Moreover, plaintiffs failed to make a showing of how the stay would result in
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`stale evidence, faded memories, and lost documents. See Pi-Net Int'l, Inc. v. Focus Bus. Bank, No.
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`C-12-4958-PSG, 2013 WL 4475940, at *4 (N.D. Cal. Aug. 16, 2013) (finding no real prejudice
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`because plaintiff failed to point to any specific prejudice from a delay that is more than
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`speculative.”).
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`Finally, the Court does not agree that Neodron “elect[ing] to proceed” with patents ‘286,
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`‘237, and ‘770 simplifies the issues in question and trial of the case. Allowing Neodron to proceed
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`with patents ‘286, ’237, and ‘770 without the dismissal, with prejudice, of the claims involving the
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`patents pending IPR would allow Neodron to later assert those claims at a later stage of litigation or
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`Case 3:19-cv-05644-SI Document 113 Filed 11/10/20 Page 4 of 4
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`in a new proceeding. Neodron noted this possibility in its own reply to defendants’ opposition. Dkt.
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`No. 111 (“If one of more patents survive IPR, and if Neodron decides to assert those patents,
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`Defendants can hardly complain that it is unfair for them to litigate those patents on the merits …
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`”). Therefore, there would be no simplification if Neodron were to elect to proceed with patents
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`‘286, ‘237, and ‘770 because granting Neodron’s motion would potentially delay litigation or
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`introduce new issues in question at a later stage of litigation. See Murata Machinery LTD. V.
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`Daifuku Co., LTD., 830 F.3d 1357, 1362 (Fed. Cir. 2016) (holding that “[t]he burden litigation
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`places on the court and the parties when IPR proceedings loom” may be considered by the court
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`when determining whether to stay a case.).
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`CONCLUSION
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`Accordingly, for the foregoing reasons, the court DENIES plaintiff’s motion to lift the stay.
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`Dkt. No. 109.
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`IT IS SO ORDERED.
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`Dated: November 10, 2020
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`______________________________________
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`SUSAN ILLSTON
`United States District Judge
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