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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF CALIFORNIA
`
`SMITH INTERFACE TECHNOLOGIES,
`LLC,
`
`v.
`APPLE INC.,
`
`Plaintiff,
`
`Defendant.
`
`Case No.: 23-CV-1187 TWR (BGS)
`
`ORDER (1) GRANTING IN PART
`AND DENYING IN PART
`DEFENDANT’S MOTION TO STAY,
`(2) STAYING ACTION, AND
`(3) VACATING CLAIM
`CONSTRUCTION HEARING
`
`(ECF No. 77)
`Presently before the Court is Defendant Apple Inc.’s Motion to Stay the Action
`pending resolution of pending Inter Partes Review (“IPR”) proceedings (“Mot.,” ECF No.
`110), as well as Plaintiff Smith Interface Technologies, LLC’s Response in Opposition to
`(“Opp’n,” ECF No. 114) and Apple’s Reply in Support of (“Reply,” ECF No. 118) the
`Motion and the Parties’ Supplemental Briefing (“Pl.’s Supp. Br.,” ECF No. 122; “Def.’s
`Supp. Br.,” ECF No. 123). The Court held a hearing on September 19, 2024. (See ECF
`Nos. 121, 124 (“Tr.”).) Having carefully considered the Parties’ arguments and the
`relevant law, the Court GRANTS IN PART AND DENIES IN PART Apple’s Motion;
`STAYS this action pending the issuance of the last of the Patent Trial and Appeal Board’s
`(“PTAB”) institution decisions on Apple’s pending IPR petitions; and VACATES the
`December 12, 2024 claim construction hearing.
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`BACKGROUND
`Inventor Michael Smith “developed new advanced input and output techniques for
`
`mobile user interfaces[, (“UIs”)]” such as “multi-part gestures, where users can take
`successive actions, such as by touching, tapping, long-pressing, or sliding, and receive
`feedback at each step, whether visual or tactile (or both).” (See ECF No. 66 (“TAC”) ¶ 19.)
`“These mobile UI advances resulted in numerous patents, including U.S. Patent Nos.
`10,642,413 (the “’413 Patent”); 10,649,578 (the “’578 Patent”); 10,649,580 (the “’580
`Patent”); 10,656,754 (the “’754 Patent”); 10,656,755 (the “’755 Patent”); 10,656,758 (the
`“’758 Patent”); 10,671,212 (the “’212 Patent”); 10,725,581 (the “’581 Patent”); 10,936,114
`(the “’114 Patent”); and 11,740,727 (the “’727 Patent”) (collectively, the “Asserted
`Patents”).” (Id. ¶ 17.) The Asserted Patents are all “continuation[s] of and claim[] priority
`to numerous patents, patent applications, and provisional patent applications dating back
`to U.S. Provisional Application No. 61/515,835, filed August 5, 2011.” (See id. ¶¶ 21–30.)
`Smith is the sole named inventor of the Asserted Patents, all of which are assigned solely
`to Plaintiff Smith Interface. (See id.)
`
`On June 27, 2023, Smith Interface filed the instant action against Apple, asserting
`nine claims of patent infringement as to each of the ’413, ’578, ’580, ’754, ’755, ’758,
`’212, ’581, and ’114 Patents (the “Original Asserted Patents”), (see generally ECF No. 1
`(“Compl.”)), which was subsequently reassigned to the undersigned. (See ECF No. 4.)
`The ’727 Patent issued on August 29, 2023, (see TAC ¶ 30), before Apple’s responsive
`pleading deadline. (See ECF No. 21.) Accordingly, on the same day it had issued, Smith
`Interface amended its Complaint pursuant to Federal Rule of Civil Procedure 15(a)(1) to
`add a claim for infringement of the ’727 Patent. (See generally ECF No. 22 (“FAC”).)
`Apple moved to dismiss the First Amended Complaint’s claims for willful and indirect
`infringement on October 3, 2023. (See generally ECF No. 36.)
`
`On October 25, 2023, Smith Interface requested leave to file an amended complaint
`pursuant to Rule 15(a)(2). (See generally ECF No. 42.) The following day, the Court
`granted Smith Interface’s request and denied as moot Apple’s Original Motion to Dismiss,
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`(see generally ECF No. 43), and Smith Interface filed a Second Amended Complaint. (See
`generally ECF No. 44). Apple then moved to dismiss the Second Amended Complaint’s
`claims for willful and indirect infringement on November 9, 2023. (See generally ECF
`No. 46.) On March 5, 2024, the Court granted in part and denied in part Apple’s Motion
`to Dismiss and granted Smith Interface leave to file an amended complaint. (ECF No. 63.)
`On March 19, 2024, Smith Interface filed the operative Third Amended Complaint. (See
`generally TAC.)
`On April 1, 2024, Apple filed a motion to narrow the number of claims Smith
`Interface could assert in its infringement contentions. (ECF No. 73.) On May 16, 2024,
`the Court granted in part Apple’s motion, and the Court ordered that Smith Interface could
`assert no more than 200 total claims in its initial infringement contentions. (See ECF No.
`91 at 9.) On June 5, 2024, Smith Interface served its initial infringement contentions,
`identifying the claims Smith Interface is asserting in this action. (See Mot. at 3.) On
`June 20, 2024, the Court entered a Scheduling Order for the action. (ECF No. 102.)
`Between June 26, and June 28, 2024, Apple filed 15 IPR petitions with the PTAB
`challenging the validity of claims from nine of the ten Asserted Patents—the ’413, ’578,
`’580, ’754, ’755, ’758, ’212, ’581, and ’114 Patents. (See ECF No. 105; Mot. at 3; Opp’n
`at 5.) Those IPR petitions challenge the validity of all the asserted claims from the ’413,
`’578, ’580, ’755, ’758, ’212, ’581, and ’114 Patents. (Mot. at 3–4; Opp’n at 5.) As to the
`’754 Patent, Apple’s IPR petition challenges the validity of 85 of the 166 asserted claims
`(including all independent claims) from that patent. (Id.) On August 1, 2024, Apple filed
`an IPR petition as to the ’727 Patent, challenging the validity of all the asserted claims from
`that patent, (id.), as well as the instant Motion. (See generally ECF No. 110.) The PTAB’s
`decisions on whether to grant Apple’s IPR petitions and institute IPR proceedings as to the
`Asserted Patents are expected to be issued between January and March 2025. (See Mot. at
`4 (citing 35 U.S.C. § 314(b)); Tr. at 30:4–8, 31:3–5.)
`On August 5, 2024, the Court granted Apple’s partial motion to dismiss and
`dismissed with prejudice Smith Interface’s claims for pre-suit willful and induced patent
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`infringement. (ECF No. 112 at 13.) On August 19, 2024, Apple filed an answer to the
`operative complaint (“Ans.,” ECF No. 116).
`On September 5, 2024, Apple filed a petition for ex parte reexamination with the
`U.S. Patent and Trademark Office (“PTO”) challenging the validity of the remaining
`asserted claims from the ’754 Patent. (See ECF No. 119.) With the filing of this additional
`petition, Apple now has pending PTO challenges as to the validity of all 200 asserted claims
`in this action. (See id.)
`On October 1, 2024, the Parties filed their joint claim construction hearing statement,
`chart, and worksheet. (ECF No. 126.) In that filing, the Parties represent that they currently
`dispute the proper construction of twelve claim terms. (See id.)
`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” or
`review. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1426–27 (Fed. Cir. 1988) (citation omitted);
`see Murata Mach. USA v. Daifuku Co., 830 F.3d 1357, 1361–62 (Fed. Cir. 2016); see also
`Clinton v. Jones, 520 U.S. 681, 706 (1997) (“The District Court has broad discretion to
`stay proceedings as an incident to its power to control its own docket.”). In determining
`whether to grant a stay pending review or reexamination by the PTO, district courts
`generally consider the following three factors: (1) the stage of the proceedings, (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. Murata
`Mach., 830 F.3d at 1361; Masimo Corp. v. Sotera Wireless, No. 19-CV-01100-BAS-NLS,
`2021 WL 321481, at *2 (S.D. Cal. Feb. 1, 2021). Judicial consideration of a stay request
`“is not limited to these factors, but rather can include a review of totality of the
`circumstances.” Qualcomm Inc. v. Apple Inc., No. 3:17-CV-2403-CAB-MDD, 2018 WL
`4104966, at *1 (S.D. Cal. Aug. 29, 2018); see Murata Mach., 830 F.3d at 1362 (“Attendant
`to the district court’s inherent power to stay proceedings is the court’s discretionary
`prerogative to balance considerations beyond those captured by the three-factor stay test.”).
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`There is no per se rule that patent cases should be stayed pending IPRs. Wi-LAN
`Inc. v. LG Elecs., Inc., No. 18-CV-01577-H-BGS, 2018 WL 9516050, at *2 (S.D. Cal.
`Dec. 4, 2018); Clinicomp Int’l, Inc. v. Cerner Corp., No. 17CV2479-GPC(BLM), 2018
`WL 5617694, at *2 (S.D. Cal. Oct. 30, 2018). Nevertheless, courts in this district have
`recognized that there is a “‘a liberal policy in favor of granting motions to stay pending
`IPR.’” Masimo, 2021 WL 321481, at *2 (quoting Zomm, LLC v. Apple Inc., 391 F. Supp.
`3d 946, 956 (N.D. Cal. 2019)); see, e.g., Omnitracs, LLC v. Platform Sci., Inc., No. 20-
`CV-0958-JLS-MDD, 2021 WL 857005, at *3 (S.D. Cal. Mar. 8, 2021); Clinicomp, 2018
`WL 5617694, at *2; Qualcomm, 2018 WL 4104966, at *1. The moving party bears the
`burden of demonstrating the need for the requested stay. See Clinton, 520 U.S. at 708; Wi-
`LAN, 2018 WL 9516050, at *2.
`
`ANALYSIS
`By the present Motion, Apple moves to stay the action pending the IPR proceedings.
`(Mot. at 1.) Specifically, Apple requests that the Court stay the case until the PTAB decides
`whether to institute the IPRs and, if the PTAB institutes IPR proceedings against the
`Asserted Patents, that the case be stayed until the IPR proceedings are complete. (Id. at 2.)
`I.
`Stage of the Proceedings
`The first factor considers “‘whether the litigation is at an early stage.’” Wi-LAN,
`2018 WL 9516050, at *2 (quoting Sec. People, Inc. v. Ojmar US, LLC, No. 14-CV-04968-
`HSG, 2015 WL 3453780, at *2 (N.D. Cal. May 29, 2015)). Considerations relevant to the
`court’s analysis of this factor include “the status of discovery, claim construction, setting
`of a trial date, and the court’s expenditure of resources.” Vivint, Inc. v. SkyBell Techs.,
`Inc., No. CV 21-9472-GW-GJSX, 2022 WL 18587113, at *2 (C.D. Cal. Nov. 9, 2022); see
`Wi-LAN, 2018 WL 9516050, at *2 (“[C]ourts consider whether discovery is complete and
`whether a trial date has been set.”). “Courts favor stays when litigation is in the early
`stages.” Vivint, 2022 WL 18587113, at *2; see Omnitracs, 2021 WL 857005, at *3. “‘If
`a significant amount of discovery remains, a stay is more appropriate.’” Taction Tech.,
`Inc. v. Apple Inc., No. 21-CV-812 TWR (JLB), 2022 WL 228978, at *2 (S.D. Cal. Jan. 26,
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`2022) (quoting Blast Motion, Inc. v. Zepp Labs, Inc., No. 15-CV-700 JLS, 2016 WL
`5107678, at *2 (S.D. Cal. Mar. 29, 2016)).
`In its Opposition, Smith Interface focuses on the stage of the proceedings when the
`Court heard Apple’s Motion to stay and when the PTO is expected to render its institution
`decisions. (See Opp’n at 17.) This is improper. The Federal Circuit has explained:
`“‘Generally, the time of the motion is the relevant time to measure the stage of litigation.’”
`VirtualAgility Inc. v. Salesforce.com, Inc., 759 F.3d 1307, 1317 (Fed. Cir. 2014); see
`Immersion Corp. v. Valve Corp., No. 2:23-CV-00712-TL, 2024 WL 1466536, at *3 (W.D.
`Wash. Apr. 4, 2024) (“[T]he proper time to measure the stage of the litigation is at the date
`of the filing of the motion to stay.” (internal quotation marks omitted)); see also Drink
`Tanks Corp. v. GrowlerWerks, Inc., No. 3:16-CV-410-SI, 2017 WL 2633389, at *6 n.5 (D.
`Or. June 19, 2017) (“[T]he potential timeline of resolution by the PTAB is not relevant to
`this factor.”). Thus, the analysis of this factor will focus on the stage of the proceedings at
`the time Apple filed its Motion to Stay—August 1, 2024.
`By August 1, 2024, this case had been pending for 13 months. But the case was also
`still at the pleading stage, with Apple yet to file its answer to the operative pleading. The
`parties had engaged in some discovery, with Smith Interface serving Apple with 11
`interrogatories and 59 requests for productions and Apple serving Smith Interface with a
`single request for production.1 (See Opp’n at 4.) Further, all major deadlines in the case
`were several months away. Under the Court’s June 2024 Scheduling Order, the claim
`construction hearing is scheduled for December 12, 2024; the close of fact discovery is
`scheduled for February 10, 2025; the close of expert discovery is scheduled for May 28,
`2025; and the pretrial conference is scheduled for October 2025. (See ECF No. 102 at
`2–3, 6.) No trial date has been set. (See generally id.)
`/ / /
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`On August 14, 2024, Apple served Smith Interface with 11 interrogatories and 57 requests for
`production. (Opp’n at 4.)
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`In light of the above, the present action is still at an early stage, and, therefore, this
`factor weighs in favor of a stay. See Taction, 2022 WL 228978, at *2 (“[D]iscovery is not
`nearing completion, and there is still an abundance of work ahead of the parties to complete
`the discovery process, which weighs in favor of a brief stay.”); WAG Acquisition, LLC v.
`Amazon.com, Inc., No. C22-1424JLR, 2023 WL 1991888, at *3 (W.D. Wash. Feb. 14,
`2023) (“The fact that substantial additional discovery, claim construction, and other issues
`lie ahead in this case weighs in favor of a stay.”); see also, e.g., TAS Energy, Inc. v. San
`Diego Gas & Elec. Co., No. 12CV2777-GPC BGS, 2014 WL 794215, at *3 (S.D. Cal. Feb.
`26, 2014) (finding factor weighed in favor of stay where, although the parties had
`exchanged infringement and invalidity contentions and filed opening claim construction
`briefs, the court has not yet held a claim construction hearing, the action was in the midst
`of discovery, and no trial date had been set); Qualcomm, 2018 WL 4104966, at *2 (same).
`II.
`Simplification of the Issues
`The second factor courts consider is whether granting a stay could simplify the
`litigation. Wi-LAN, 2018 WL 9516050, at *3. Here, Apple’s various IPR petitions
`collectively challenge the validity of claims from all ten of the Asserted Patents, including
`all of the asserted claims from nine of the ten Asserted Patents. (See Mot. at 3–4; Opp’n
`at 5.) As such, there is a great potential for simplification of the issues in this action from
`the IPR proceedings.
`“If the PTAB institutes and cancels all the asserted claims of any patent, it will
`remove that patent from the case, thereby significantly reducing the scope of this
`litigation.” Qualcomm, 2018 WL 4104966, at *2; see Fresenius USA, Inc. v. Baxter Int’l,
`Inc., 721 F.3d 1330, 1340 (Fed. Cir. 2013) (“[W]hen a claim is cancelled, the patentee loses
`any cause of action based on that claim, and any pending litigation in which the claims are
`asserted becomes moot.”); see, e.g., XY, LLC v. Trans Ova Genetics, 890 F.3d 1282, 1294
`(Fed. Cir. 2018) (holding that its affirmance of the PTAB’s final written decision from an
`IPR proceeding “renders final a judgment on the invalidity of the [patent], and has an
`immediate issue-preclusive effect on any pending or co-pending actions involving the
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`patent”). Further, even if some or all of the challenged claims survive the IPRs, staying
`the action could still result in simplification of the issues by estopping Apple from asserting
`certain invalidity challenges in this case that it raised or reasonably could have raised in
`the IPRs and by clarifying the scope of the asserted claims.2 See Qualcomm, 2018 WL
`4104966, at *2; Clinicomp, 2018 WL 5617694, at *4; see also Cal. Inst. of Tech. v.
`Broadcom Ltd., 25 F.4th 976, 989 (Fed. Cir. 2022) (“When IPR proceedings result in a
`final written decision, 35 U.S.C. § 315(e)(2) precludes petitioners from raising invalidity
`grounds in a civil action that they ‘raised or reasonably could have raised during that inter
`partes review.’”); Aylus Networks, Inc. v. Apple Inc., 856 F.3d 1353, 1362 (Fed. Cir. 2017)
`(“[S]tatements made by a patent owner during an IPR proceeding, whether before or after
`an institution decision, can be considered for claim construction and relied upon to support
`a finding of prosecution disclaimer.”). Indeed, even if the PTAB were to deny all of
`Apple’s petitions and not institute any IPRs, the proceedings could still provide helpful
`guidance to the Court regarding the scope of the asserted claims.3 See Aylus Networks, 856
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`2
`Smith Interface notes that, even if the IPRs are instituted, Apple can still raise invalidity grounds
`in this case under system prior art, indefiniteness, written description, enablement, and subject matter
`ineligibility in addition to noninfringement. (Opp’n at 14.) That may be true, but it does not change the
`fact that Apple would be estopped under § 315(e)(2) from presenting certain invalidity challenges in this
`case if the IPRs are instituted, meaning that there would be some simplification of the issues. A reduction
`in the number of invalidity issues in this case is a simplification of the issues, nonetheless.
`
`3
`Smith Interface contends that the IPR petitions’ potential to aid in claim construction is “pure
`conjecture.” (Opp’n at 13.) Smith Interface notes that Apple has taken the position that all 119 asserted
`claims that Apple has challenged in its IPR petitions should be given their plain and ordinary meaning.
`(Id.) And Smith Interface states that it, “for the most part, likely agrees with Apple.” (Id.) Smith Interface
`also notes that the filing of preliminary patent owner’s responses to Apple’s IPR petitions is optional. (Id.
`(citing 37 C.F.R. § 42.107).) The Court rejects these arguments by Smith Interface.
`
`First, the fact that Apple has taken the position that all of the challenged claims should be given
`their plain and ordinary meaning is of no consequence because prosecution disclaimer is based on
`statements by the patentee, not the accused infringer. See Aylus Networks, 856 F.3d at 1361. And Smith
`Interface only states that it, “for the most part, likely agrees with Apple.” It does not affirmatively
`represent that it will agree with Apple and assert that all challenged claims should be given their plain and
`ordinary meaning.
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`F.3d at 1362; Taction, 2022 WL 228978, at *2 (“‘Even if no patent claim is eliminated, the
`intrinsic record developed during the IPR may inform on issues like claim construction.’”).
`At the motion hearing, Smith Interface asserted that when the case reached the claim
`construction hearing there would be “very, very few issues for this Court to decide,”
`contending that there will really be only one disputed claim term that the Court will need
`to construe. (Tr. at 17:10–18:5.) This representation is belied by the Parties’ 379-page
`Joint Claim Construction Chart, Worksheet, and Hearing Statement, (see generally ECF
`No. 126), which states that the Parties currently have 12 claim construction disputes that
`will require a four-hour Markman hearing. (See id. at 4.) Accordingly, contrary to Smith
`Interface’s representations, there currently are many claim construction issues for the Court
`to resolve, which weighs in favor of staying the proceedings pending the outcome of
`Apple’s IPR petitions in light of their potential to simplify the issues in this case.
`Smith Interface contends that the simplification of the issues factor does not weigh
`in favor of a stay because Apple declined to challenge all asserted claims in its IPR
`petitions. (See Opp’n at 12.) Apple did not challenge 81 asserted claims from the ’754
`Patent in its IPR petitions.4 (Id.) But the appropriate standard “is simplification of the
`
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`Further, the fact that the filing of a preliminary response by the patentee is optional is also of no
`consequence given that Smith Interface does not represent to the Court that it will not file preliminary
`responses. If Smith Interface files preliminary responses to Apple’s IPR petitions, those responses can be
`considered for claim construction purposes. See Aylus Networks, 856 F.3d at 1361–62 (holding that
`statements made by a patentee in a preliminary response “can be considered for claim construction and
`relied upon to support a finding of prosecution disclaimer”); Qualcomm, 2018 WL 4104966, at *2
`(“Qualcomm’s submissions to the PTAB in response to Apple’s IPR petitions may inform the construction
`of disputed claim terms.”).
`
`4
`On September 5, 2024, Apple filed a petition for ex parte reexamination with the PTO challenging
`the validity of all the remaining asserted claims from the ’754 Patent. (See ECF No. 119.) Petitions for
`ex parte reexamination are quite different from IPR petitions. Specifically, the ex parte reexamination
`procedure “both takes considerably longer to resolve than IPR and lacks its estoppel benefits.” TPK Touch
`Sols., Inc v. Wintek Electro-Optics Corp., No. 13-CV-02218-JST, 2013 WL 6021324, at *5 (N.D. Cal.
`Nov. 13, 2013); see also Evolutionary Intel. LLC v. Yelp Inc, No. C-13-03587 DMR, 2013 WL 6672451,
`at *2 (N.D. Cal. Dec. 18, 2013) (“The IPR timeline is more compressed than the timelines under either
`the predecessor inter partes reexamination procedure or the ex parte reexamination procedure.”); (see also
`ECF No. 124 at 9 (representing that the average time from filing to issuance of a reexamination certificate
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`district court case, not complete elimination of it by the PTAB.” LELO, Inc. v. Standard
`Innovation (US) Corp., No. 13-CV-01393-JD, 2014 WL 2879851, at *3 (N.D. Cal.
`June 24, 2014) (rejecting the patentee’s argument that “simplification will not happen here
`because, no matter what, some claims will survive the PTAB review and this lawsuit will
`continue”); accord mate, LLC v. Advanced Lighting Concepts, LLC, No. 22-CV-1095-
`CAB-DEB, 2023 WL 6612481, at *2 (S.D. Cal. Oct. 10, 2023); see Masimo, 2021 WL
`321481, at *3 (“‘[T]he question is merely whether the issues will be simplified, and not
`whether the entire case will be resolved.’”). Although Apple did not challenge all of the
`asserted claims in its IPR petitions, the fact remains that Apple filed IPR petitions as to all
`ten Asserted Patents and challenged all asserted claims from nine out of the ten Asserted
`Patents. (See Mot. at 3–4; Opp’n at 5.) With respect to the ’754 Patent, Apple’s IPR
`petitions challenge the majority of the asserted claims from that patent (85 of the 166
`asserted claims), including all independent claims. (See id.) Consequently, the
`simplification of the issues factor weighs in favor of a stay despite Apple’s failure to
`challenge all of the asserted claims from one of the Asserted Patents.5 See, e.g., mate, 2023
`WL 6612481, at *2 (finding factor weighed in favor of stay where accused infringer filed
`IPR petitions as to all of the asserted patents but did not challenge all asserted claims);
`Qualcomm, 2018 WL 4104966, at *2 (finding factor weighed in favor stay where the
`accused infringer filed IPR petitions challenging the validity of all the asserted claims from
`the five asserted patents except for a few claims from one of the patents).
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`is 25.2 months)). Consequently, at this time, the Court gives little weigh to Apple’s filing of this ex parte
`reexamination petition.
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`Smith Interface notes that, in light of the Court’s claim narrowing order, this case is already on a
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`path towards simplification because it will involve no more than 32 claims and 40 prior art references
`within four months. (See Opp’n at 10, 12.) Although this is true, this does not mean that the IPR
`proceedings cannot also result in a simplification of the issues in the case. Indeed, the issues in this case
`can be simplified both by the IPR proceedings and by the Court’s Scheduling Orders, including the Court’s
`claim narrowing deadlines. As Apple notes, “[t]he efficiencies to be gained are complementary, not
`mutually exclusive.” (Reply at 3.) It is not as though the Court will get rid of its claim narrowing
`requirements if the Court stays the action.
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`Smith Interface asserts that a majority of district courts deny stay request prior to
`IPR institution. (Opp’n at 10, 19–20 (citing Trover Grp., Inc. v. Dedicated Micros USA,
`No. 2:13-CV-1047-WCB, 2015 WL 1069179, at *5–6 (E.D. Tex. Mar. 11, 2015) (Bryson,
`J.)).) Smith Interface also asserts that a stay pending IPR review will only simplify the
`issues and streamline the cases if the PTAB grants the petitions and institutes the requests
`IPR. (Id. at 11 (citing Trover, 2015 WL 1069179, at *4).) Smith Interface contends that,
`until the PTAB grants a petition, any argument about whether the IPR process will simplify
`the issues is highly speculative. (Id. (citing Infogation Corp. v. ZTE Corp., No. 16-CV-
`01901-H-JLB, 2017 WL 2123625, at *1 (S.D. Cal. May 16, 2017)).)
`In support of these arguments, Smith Interface relies on two district court
`decisions—one from 2015 and one from 2017. (See id.) There have been two significant
`and substantial changes to the law governing IPR proceedings, however, since 2018. One
`district court aptly summed up these changes as follows:
`First, in SAS Inst., Inc. v. Iancu, [584 U.S. 357, 361–63] (2018), the Supreme
`Court held that, where the PTAB institutes inter partes review, it must address
`every challenged claim in the petition; second, regulations promulgated in
`October 2018[,] made clear that, when construing patent claims for IPR
`proceedings, the PTAB shall apply “the same claim construction standard that
`would be used [by district courts] to construe the claim in a civil action under
`35 U.S.C. 282(b),” 37 C.F.R. § 42.100(b). In the time since, courts have
`recognized that the logic for granting a pre-institution stay has “been
`strengthened by [these] recent changes in the law.” RetailMeNot, Inc. v.
`Honey Science LLC, 2020 WL 373341 (D. Del. Jan. 23, 2020).
`Nike, Inc. v. Lululemon USA Inc., No. 22-CV-00082-RAO-TW, 2023 WL 2214884, at *2
`(S.D.N.Y. Feb. 24, 2023). Indeed, in recent years, most courts in this District have
`recognized a liberal policy in favor of granting motions to stay pending IPR and have
`granted limited stays of the action even when only a petition for IPR has been filed. See,
`e.g., mate, 2023 WL 6612481, at *2; Taction, 2022 WL 228978, at *3; Omnitracs, 2021
`WL 857005, at *3, 8; Clinicomp, 2018 WL 5617694, at *2, 7; Qualcomm, 2018 WL
`4104966, at *1, 3; Wi-LAN, Inc. v. LG Elecs., Inc., No. 317CV00358BENMDD, 2018 WL
`2392161, at *1 (S.D. Cal. May 22, 2018); see also Speir Techs. Ltd. v. Apple, Inc., No.
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`5:23-CV-00095-EJD, 2023 WL 2714931, at *2 (N.D. Cal. Mar. 30, 2023) (“[C]ourts in
`this district have frequently stayed cases pending IPR even when the PTAB has not yet
`issued a decision on institution.”).
`Moreover, any uncertainty regarding how precisely the PTAB will rule on the
`pending IPR petitions can be mitigated by only staying the proceedings for a short duration
`until the PTAB issues its decisions on whether to institute the IPRs, which will occur in
`approximately five months. See Molo Design, Ltd. v. Chanel, Inc., No. 21-CV-01578
`(VEC), 2022 WL 2135628, at *2 (S.D.N.Y. May 2, 2022) (explaining that, given that the
`stay will be “relatively short,” “the potential for the PTAB’s decision to simplify the issues
`in this litigation outweighs the attendant costs of postponed litigation”); see, e.g., mate,
`2023 WL 6612481, at *2; Taction, 2022 WL 228978, at *2. In sum, this factor weighs “in
`favor of a limited stay of proceedings until the PTAB issues its decisions on whether to
`institute IPR.”6 Qualcomm, 2018 WL 4104966, at *2.
`III. Undue Prejudice/Tactical Disadvantage
`The last factor courts consider is whether a stay would unduly prejudice or present
`a clear tactical disadvantage to the nonmoving party. The delay inherent in the IPR process
`does not, by itself, constitute undue prejudice. Omnitracs, 2021 WL 857005, at *4;
`Qualcomm, 2018 WL 4104966, at *3; see also PersonalWeb Techs., LLC v. Apple Inc., 69
`F. Supp. 3d 1022, 1029 (N.D. Cal. 2014) (“Courts have repeatedly found no undue
`prejudice unless the patentee makes a specific showing of prejudice beyond the delay
`necessarily inherent in any stay.”). “Rather, proper considerations include whether the
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`6
`For this factor, both Apple and Smith Interface present the Court with certain statistics related to
`IPR proceedings to support their respective positions. (See Mot. at 11–12; Opp’n at 16; Reply at 7–8.)
`The Court declines to give much weigh to these statistics. “[T]he overall statistics for the number of
`petitions that are reviewed and the number of claims that are invalidated are not especially enlightening
`as to the likely disposition of any particular patents or claims, since the likelihood of invalidation depends
`entirely on the particulars of the patents and claims in dispute.” Trover, 2015 WL 1069179, at *4. The
`Court notes, however, that Smith Interface’s statistical analysis is particularly unhelpful in resolving the
`pending motion. (See Opp’n at 16 (claiming that Apple only has a 0.0002059% (about 1 in 5,000) chance
`of invalidating all the challenged claims).)
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`nonmovant will be prejudiced by delaying access to discovery and allowing Defendant’s
`alleged infringement to continue in the interim.” Omnitracs, 2021 WL 857005, at *4
`(internal quotation marks omitted) (quoting DNA Genotek Inc. v. Spectrum Sols. L.L.C.,
`No. 16-CV-1544 JLS (NLS), 2016 WL 9047159, at *3 (S.D. Cal. Oct. 7, 2016)).
`Smith Interface asserts that it will suffer undue prejudice if the Court stays the action
`because the case will be left languishing on the Court’s docket with no discovery, claim
`con