1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`Case 3:22-cv-00412-RSH-DDL Document 64 Filed 10/07/24 PageID.1413 Page 1 of 6
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF CALIFORNIA
`
` Case No.: 22-cv-412-RSH-DDL
`
`ORDER GRANTING MOTION TO
`LIFT STAY
`
`[ECF No. 61]
`
`Plaintiff,
`
`Defendant.
`
`SAMESURF, INC.,
`
`v.
`INTUIT INC.,
`
`On June 30, 2023, the Court stayed this case pending the resolution of inter partes
`review (“IPR”) proceedings. ECF No. 60. Before the Court is plaintiff Samesurf, Inc.’s
`motion to lift the stay on the instant action. ECF No. 61. For the reasons below, the Court
`grants Plaintiff’s motion and lifts the stay.
`I.
`BACKGROUND
`
`On March 29, 2022, Samesurf filed the Complaint in this action against defendant
`Intuit, alleging infringement of U.S. Patent Nos. 9,483,448 (“the ’448 Patent”), 9,185,145
`(“the ’145 Patent”), and 8,527,591 (“the ’591 Patent”) (collectively, “the patents-in-suit”).
`ECF No. 1. Specifically, Plaintiff asserts Defendant infringes: (1) claims 1-4, 6-8, 11-14,
`and 16 of the ’448 Patent; (2) claims 1-5, 7-14, and 16-17 of the ’145 Patent; and (3) claims
`1-6, 10-12, and 14-16 of the ’591 Patent, by utilizing Plaintiff’s patented co-browsing
`
`1
`
`22-cv-412-RSH-DDL
`
`

`

`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`Case 3:22-cv-00412-RSH-DDL Document 64 Filed 10/07/24 PageID.1414 Page 2 of 6
`
`
`technology as part of Defendant’s TurboTax Online, QuickBooks Online, TurboTax Live,
`QuickBooks Live, Smartlook, and other co-browser enabled Intuit products. ECF Nos. 1
`¶¶ 47–49, 87–208.
`
`On December 16, 2022, Defendant filed three IPR petitions with the United States
`Patent and Trademark Office challenging all the claims in the patents-in-suit: IPR Nos.
`2023-00339, 2023-00341, and 2023-00342 (collectively, the “IPR Petitions”). ECF No. 59
`at 2.1 On June 28, 2023, the Patent Trial and Appeal Board (“PTAB”) instituted
`proceedings on all three IPR Petitions. Id. The Court subsequently granted the Parties’ joint
`motion to stay the instant case pending the completion of these proceedings. ECF No. 60.
`On June 25, 2024, the PTAB issued Final Written Decisions (“FWD”) on the IPR
`Petitions, finding that claims 1-16 of the ’448 Patent are not unpatentable [ECF No. 61-3
`at 63], but that claims of the ’145 and ’591 Patents are unpatentable [ECF Nos. 61-1 at 5,
`62 at 6].
`On July 25, 2024, Defendant filed a request for Director Review of the FWD on the
`’448 Patent. ECF No. 61-1 at 6. On August 29, 2024, Defendant’s request for Director
`Review was denied. ECF No. 62 at 7. On September 6, 2024, Defendant filed a notice of
`appeal to the U.S. Court of Appeals for the Federal Circuit. Id. As of the date of this Order,
`the Federal Circuit has not issued a decision on Defendant’s appeal.
`On August 16, 2024, Plaintiff filed the instant motion to lift the stay. ECF No. 61.
`Defendant filed an opposition [ECF No. 62], and Plaintiff filed a reply [ECF No. 63].
`II. LEGAL STANDARD
`“Courts have inherent power to manage their dockets and stay proceedings,
`including the authority to order a stay pending conclusion of a PTO reexamination.”
`Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1426–27 (Fed. Cir. 1988) (internal citations
`omitted). See Clinton v. Jones, 520 U.S. 681, 683 (1997) (“[T]he District Court has broad
`
`
`
`All citations to electronic case filing (“ECF”) entries refer to the ECF-generated page
`1
`numbers.
`
`2
`
`22-cv-412-RSH-DDL
`
`

`

`Case 3:22-cv-00412-RSH-DDL Document 64 Filed 10/07/24 PageID.1415 Page 3 of 6
`
`
`discretion to stay proceedings as an incident to its power to control its own docket.”). “The
`same court that imposes a stay of litigation has the inherent power and discretion to lift the
`stay.” Lund Motion Products, Inc. v. T-max Hangzhou Technology Co., Ltd., No. SACV
`17-01914-CJC-JPR, 2020 WL 13610390, at *2 (C.D. Cal. May 13, 2020) (quoting
`Independent Living Ctr. of S. Cal. v. Douglas, No. CV 08-3315 CAS MANX, 2012 WL
`1622346, at *2 (C.D. Cal. May 8, 2012) (internal quotation omitted)). “The standard for
`determining whether an existing stay should remain in place is the same as the standard for
`determining whether a [c]ourt should impose a stay in the first place.” MasterObjects, Inc.
`v. eBay, Inc., No. 16-cv-06824-JSW, 2018 WL 11353751, at *1 (N.D. Cal. Nov. 7, 2018).
`Courts consider three factors when ruling on a stay: (1) the stage of litigation,
`including whether discovery is complete and whether a trial date has been set; (2) whether
`a stay will simplify the issues in question and trial of the case; and (3) whether a stay would
`unduly prejudice or present a clear tactical disadvantage to the nonmoving party. Lund
`Motion Products, 2020 WL 13610390, at *2 (citing Universal Elecs., Inc. v. Universal
`Remote Control, Inc., 943 F. Supp. 2d 1028, 1030–31 (C.D. Cal. 2013)). A court may also
`examine the “totality of the circumstances” to determine whether a stay is appropriate. Id.
`“A court’s consideration of the appropriateness of a stay is necessarily different (1) before
`an IPR has been instituted or completed and (2) during the pendency of an appeal of an
`IPR.” Oyster Optics, LLV v. Ciena Corporation, 17-cv-05920-JSW, 2019 WL 4729468, at
`*3 (N.D. Cal. Sept. 23, 2019). “A court may lift a stay if the circumstances supporting the
`stay have changed such that the stay is no longer appropriate.” Murata Mach. USA v.
`Daifuku Co., 830 F.3d 1357, 1361 (Fed. Cir. 2016); see Credit Acceptance Corp. v.
`Westlake Servs., LLC, No. 13-cv-1523, 2015 WL 12860460, at *3 (C.D. Cal. July 2, 2015).
`III. ANALYSIS
`Here, the Court concludes that these factors favor granting the Plaintiff’s motion to
`lift the stay. See Oyster Optics, 2019 WL 4729468, at *2; see Lund Motion Prod., Inc.,
`2020 WL 13610390, at *2; see MasterObjects, Inc., 2018 WL 11353751, at *1.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`3
`
`22-cv-412-RSH-DDL
`
`

`

`Case 3:22-cv-00412-RSH-DDL Document 64 Filed 10/07/24 PageID.1416 Page 4 of 6
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`First, as to stage of litigation, at the time the Court entered the stay in June 2023, it
`noted that this case was in the early stages of discovery, that no party depositions had been
`noticed, and that no expert discovery had begun. ECF No. 60 at 3. While this remains true,
`significant time has now passed since Plaintiff filed this action nearly two and a half years
`ago, the PTAB has now issued its FWDs on the patents-in-suit, and Plaintiff seeks to move
`forward with this case. “[T]he existence of a stay, on its own, does not justify its
`perpetuation: this case would remain frozen in its nascent stage if the Court continued the
`stay.” Oyster Optics, 2019 WL 4729468, at *2 (citing Milwaukee Elec. Tool Corp. v. Hilti,
`Inc., No. 14-cv-1288-JPS, 2016 WL 7495808, at *2 (E.D. Wis. Dec. 30, 2016) (“Yet until
`the stay in this case is lifted, there will always be a great deal of discovery remaining.”)).
`The Court concludes that this factor is neutral. See Oyster Optics, 2019 WL 4729468, at
`*2 (concluding that this factor is neutral when “the stage of litigation [remained]
`unchanged” since ordering the stay); MasterObjects, Inc., 2018 WL 11353751, at *2
`(same).
`Second, the Court previously found that a stay pending the resolution of IPR
`proceedings would likely simplify the issues in question and trial of the case. ECF No. 60
`at 3. The issues have now been simplified. In issuing its FWDs, the PTAB upheld the
`validity of the ’448 Patent and found the claims of the ’145 and ’591 Patents to be
`unpatentable. Id. In light of the PTAB’s decision, Plaintiff has agreed to withdraw both the
`’145 and the ’591 Patents from this action when the stay is lifted. ECF No. 61-1 at 5.
`Although Defendant has appealed the PTAB’s decision with respect to the ’448 Patent,
`“the ‘pendency of an appeal from the IPR, and the possibility that the Federal Circuit may
`reverse the PTO (and thereby simplify this litigation by, presumably, making it disappear),
`is not, in and of itself, a sufficient basis to make the patentee . . . continue to wait to enforce
`patent rights that it currently holds.’” Juno Therapeutics, Inc. v. Kite Pharma, No. CV 17-
`07639 SJO, 2018 WL 1470594, at *7 (C.D. Cal. Mar. 8, 2018) (quoting Personal Audio
`LLC v. Google, Inc., 230 F. Supp. 3d 623, 627 (E.D. Tex. 2017)); Boston Scientific Corp.
`v. Edwards Lifesciences Corp., No. 16-00730-CJC, 2018 WL 11349847, at *2 (C.D. Cal.
`
`4
`
`22-cv-412-RSH-DDL
`
`

`

`Case 3:22-cv-00412-RSH-DDL Document 64 Filed 10/07/24 PageID.1417 Page 5 of 6
`
`
`Nov. 15, 2018). This factor weighs in favor of lifting the stay. See Oyster Optics, 2019 WL
`4729468, at *3 (concluding that this factor favored lifting the stay where the PTAB’s
`FWDs were on appeal to the Federal Circuit).
`Third, the Court previously found that there was no indication that a stay would
`unduly prejudice Plaintiff or present it with any tactical disadvantage. ECF No. 60 at 4.
`Indeed, Plaintiff agreed to the original stay. Id. Now that time has passed and Plaintiff
`opposes continuing the stay, the risk of undue prejudice to Plaintiff is greater. Continuation
`of the stay would keep this case at its relatively early stage for a substantial period of
`additional time and delay Plaintiff the opportunity to enforce its patent rights. See
`MasterObjects, Inc., 2018 WL 11353751, at *4 (finding that “a delay pegged to the ‘mere
`possibility’ that Federal Circuit will overturn the PTAB's FWD (or affirm and provide
`additional claim construction) does not outweigh the prejudice to [the plaintiff] inherent in
`an additional delay of the proceedings.”); see Milwaukee Electric Tool Corp., 2016 WL
`7495808, at *3 (finding that the prejudice factor favored lifting the stay because, “[a]sking
`Plaintiffs to wait for another year or more is quite different, particularly since this case has
`already been pending [for approximately two years].”). The Court concludes that this factor
`weighs in favor of lifting the stay.
`Finally, courts frequently lift stays when the PTAB has issued FWDs finding the
`asserted patents valid. See Lund Motion Prod., Inc., 2020 WL 13610390, at *3 (lifting stay
`where the Final Written Decision was on appeal to the Federal Circuit); IOENGINE, LLC
`v. PayPal Holdings, Inc., No. CV 18-452-WCB, 2020 WL 6270776, at *7 (D. Del. Oct.
`26, 2020) (same); Boston Scientific Corp., 2018 WL 11349847, at *2–3 (same);
`MasterObjects, Inc., 2018 WL 11353751, at *4 (same).
`The Court concludes that the totality of the circumstances weigh in favor of lifting
`the stay and moving forward with this litigation.
`//
`//
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`5
`
`22-cv-412-RSH-DDL
`
`

`

`Case 3:22-cv-00412-RSH-DDL Document 64 Filed 10/07/24 PageID.1418 Page 6 of 6
`
`
`IV. CONCLUSION
`For the foregoing reasons, the Court GRANTS Plaintiff’s motion to lift the stay.
`ECF No. 61. The Court ORDERS the Parties to contact the U.S. Magistrate Judge’s
`Chambers within seven days of this order to request a conference regarding scheduling.
`IT IS SO ORDERED.
`
`Dated: October 7, 2024
`
`
`______________________
`Hon. Robert S. Huie
`United States District Judge
`
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`6
`
`22-cv-412-RSH-DDL
`
`