IN THE UNITED STATES DISTRICT COURT
`
`FOR THE DISTRICT OF DELAWARE
`
`THE TRUSTEES OF COLUMBIA
`UNIVERSITY IN THE CITY OF
`NEW YORK and QIAGEN
`SCIENCES, LLC,
`
`Plaintiffs,
`
`v.
`
`ILLUMINA, INC.,
`
`Defendant.
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`Civil Action No. 19-1681-CFC/SRF
`
`ORDER
`
`Plaintiffs The Trustees of Columbia University in the City of New York and
`
`QIAGEN Sciences, LLC have moved to stay this action pending the final
`
`resolution of the inter partes review (IPR) proceedings recently instituted for each
`
`of the five asserted patents. D.I. 81. Defendant Illumina, Inc. opposes the stay
`
`motion.
`
`The parties agree that courts typically consider three factors when deciding
`
`whether to stay litigation pending an IPR: (1) whether a stay would unduly
`
`prejudice or present a clear tactical disadvantage to the nonmoving party; (2)
`
`Sony Ex. 1019
`Sony v. Ancora, IPR2021-00663
`
`Page 1 of 8
`
`
`
`FOR THE DISTRICT OF DELAWARE
`
`THE TRUSTEES OF COLUMBIA
`UNIVERSITY IN THE CITY OF
`NEW YORK and QIAGEN
`SCIENCES, LLC,
`
`Plaintiffs,
`
`v.
`
`ILLUMINA, INC.,
`
`Defendant.
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`Civil Action No. 19-1681-CFC/SRF
`
`ORDER
`
`Plaintiffs The Trustees of Columbia University in the City of New York and
`
`QIAGEN Sciences, LLC have moved to stay this action pending the final
`
`resolution of the inter partes review (IPR) proceedings recently instituted for each
`
`of the five asserted patents. D.I. 81. Defendant Illumina, Inc. opposes the stay
`
`motion.
`
`The parties agree that courts typically consider three factors when deciding
`
`whether to stay litigation pending an IPR: (1) whether a stay would unduly
`
`prejudice or present a clear tactical disadvantage to the nonmoving party; (2)
`
`Sony Ex. 1019
`Sony v. Ancora, IPR2021-00663
`
`Page 1 of 8
`
`
`
`whether a stay will simplify the issues in question and trial of the case; and (3)
`
`whether discovery is complete and whether a trial date has been set.
`
`Here, a stay would unduly prejudice and present a clear tactical disadvantage
`
`to Illumina. Plaintiffs filed this lawsuit more than a year ago. Illumina is now
`
`days away from deposing the key inventors of the asserted patents. The inventions
`
`purportedly were made in 2000-more than 20 years ago. Memories fade, and
`
`Illumina's desire to preserve this important evidence as soon as possible is more
`
`than reasonable. Further delay of the depositions is unfairly prejudicial and
`
`counsels against a stay.
`
`Second, Plaintiffs have not met their burden of establishing that a stay will
`
`simplify the issues in question or trial. Most importantly in this regard, I am
`
`persuaded that my claim construction of a key term will result in§ 112 invalidity
`
`and noninfringement theories that will not be resolved by the IPRs.
`
`Third, although discovery is not complete, there has been substantial
`
`discovery already and, as just noted, important depositions have been scheduled for
`
`the coming weeks (and will proceed per the Magistrate Judge's recent order). The
`
`fact that I have twice engaged in claim construction (because of Plaintiffs' motion
`
`for reconsideration) strongly disfavors a stay.
`
`In short, Plaintiffs have not established to my satisfaction that I should
`
`exercise my discretion and stay the case.
`
`2
`
`Sony Ex. 1019
`Sony v. Ancora, IPR2021-00663
`
`Page 2 of 8
`
`
`
`Now therefore, at Wilmington on this Eighteenth day of February in 2021,
`
`Plaintiffs' motion to stay (D.I. 81) is DENIED.
`
`3
`
`Sony Ex. 1019
`Sony v. Ancora, IPR2021-00663
`
`Page 3 of 8
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE DISTRICT OF DELAWARE
`
`RETAILMENOT, INC.,
`
`Plaintiff,
`
`v.
`
`HONEY SCIENCE LLC,
`
`Defendant.
`
`)
`)
`)
`)
`) Civ. No. 18-937-CFC/MPT
`)
`)
`)
`)
`
`ORDER
`
`Whereas, Plaintiff Retailmenot, Inc. filed a motion to stay pending
`
`resolution of its petitions before the Patent Trial and Appeal Board (PTAB) for
`
`review ofU.S. Patent No. 10,140,625 (the #625 patent) (D.I. 148);
`
`Whereas, the Magistrate Judge issued a Report and Recommendation (R&R)
`
`recommending that the Court grant the motion to stay, D.I. 218;
`
`Whereas, after the issuance of the R&R, the PTAB denied Retailmenot's
`
`petitions, D.I. 238, Exs. A, B, and C; and
`
`Whereas, in a notice filed with the Court, Defendant Honey Science LLC
`
`asserted without objection from Retailmenot that, because of the PTAB's denial of
`
`Retailmenot's petitions, the R&R "expires on its own terms," D.I. 238 at 1;
`
`Now therefore, this 27th day of May 2020, IT IS HEREBY ORDERED that:
`
`1. The Report and Recommendation has expired; and
`
`Sony Ex. 1019
`Sony v. Ancora, IPR2021-00663
`
`Page 4 of 8
`
`
`
`2. Retailmenot's motion to stay (D.I. 148) is DENIED as moot.
`
`United States Distr..ct Judge
`
`Sony Ex. 1019
`Sony v. Ancora, IPR2021-00663
`
`Page 5 of 8
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE DISTRICT OF DELAWARE
`
`IllP, INC.,
`
`Plaintiff,
`
`v.
`
`Civil Action No. 18-615-CFC
`
`HORMELFOODS
`CORPORATION, HORMEL
`FOODS CORPORATE
`SERVICES, LLC, OSCEOLA
`FOOD,LLC,ROCHELLE
`FOODS, LLC, and DOLD
`FOODS,LLC,
`
`Defendants.:
`
`MEMORANDUM ORDER
`
`Defendants Hormel Foods Corporation, Hormel Foods Corporate Services,
`
`LLC, Osceola Food, LLC, Rochelle Foods, LLC, and Dold Foods LLC move to
`
`stay this patent case pending inter partes review (IPR) of United States Patent
`
`Number 9,510,610 {the "#610 patent") (D.I. 87). The PTAB has not instituted the
`
`IPR petition. For the reasons discussed below, I will deny the motion without
`
`prejudice.
`
`1.
`
`The Court typically considers three factors when deciding whether to
`
`stay litigation pending IPR: "( 1) whether a stay would unduly prejudice or present
`
`a clear tactical disadvantage to the non-moving party; (2) whether a stay will
`
`Sony Ex. 1019
`Sony v. Ancora, IPR2021-00663
`
`Page 6 of 8
`
`
`
`simplify the issues in question and trial of the case; and (3) whether discovery is
`
`complete and whether a trial date has been set." Neste Oil OY J v. Dynamic Fuels,
`
`LLC, 2013 WL 3353984, at *1 (D. Del. July 2, 2013).
`
`2.
`
`As to the first factor, Defendants' delay in petitioning for IPR could
`
`create at least some tactical disadvantage for IDP, and a stay may unduly prejudice
`
`HIP. While HIP's status as a non-practicing entity reduces the prejudice it would
`
`suffer from a stay, there remains a potential for undue prejudice. "[S]taying a case
`
`pending PTO review risks prolonging the final resolution of the dispute and
`
`thereby may result in some inherent prejudice to the plaintiff." Neste Oil, 2013
`
`WL 3353984, at *2.
`
`3.
`
`The second factor, whether a stay will simplify the issues, disfavors a
`
`stay at this time. As noted, the IPR petition has not been instituted. "Generally,
`
`the 'simplification' issue does not cut in favor of granting a stay prior to the time
`
`the PTAB decides whether to grant the petition for inter partes review." Copy
`
`ProtectionLLCv. Netflix, Inc., 2015 WL 3799363, at *1 (D. Del. June 17, 2015)
`
`(internal quotation marks and citation omitted). Defendant may renew its motion if
`
`and when its petition is instituted, and the simplification factor may be evaluated
`
`differently at that time.
`
`4.
`
`Finally, a trial date has been set for June 15, 2020; the parties have
`
`engaged in a substantial amount of discovery, which is scheduled to be completed
`
`2
`
`Sony Ex. 1019
`Sony v. Ancora, IPR2021-00663
`
`Page 7 of 8
`
`
`
`on or before July 12, 20 19; claim construction has already been briefed, argued,
`
`and ruled upon; and there is a fully-briefed case-dispositive motion, for which a
`
`hearing is scheduled on May 22, 2019.
`
`5. Weighing the pertinent factors, I conclude that they do not favor
`
`granting the requested stay.
`
`WHEREFORE, at Wilmington this Sixteenth day of May in 2019, IT IS
`
`HEREBY ORDERED that Defendants' Motion to Stay Pending Inter Partes
`
`Review {D.I. 87) is DENIED.
`
`IT IS SO ORDERED.
`
`t/.l. ~C~NNOLLY
`
`UNITED STATES DISTRICT JUDGE
`
`3
`
`Sony Ex. 1019
`Sony v. Ancora, IPR2021-00663
`
`Page 8 of 8
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
