Important paragraphs from Handal response against motion for Stay
in response to
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Message: Buy vs Sell
Arcsoft has failed to meet its burden of establishing that the balance of competing interests weighs in its favor. Among other things, the subject petition for inter partes review (“IPR petition”) has not yet been granted and the District Court case against the non-party Defendant that filed the subject IPR petition is not stayed and is still ongoing.
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The claim construction hearing is scheduled for January 21, 2016. (Id.) On July 1, 2014, e.Digital filed a complaint for patent infringement against Dropcam, Inc. (“Dropcam”) alleging infringement of the same pool of patents at issue in the present case, though the asserted claims vary.
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Of the claims asserted in the present case, four are not at issue in the Dropcam IPR – dependent claims 22 and 23 of the ’522 patent and independent claim 14 and dependent claim 16 of the ’514 patent.
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Arcsoft filed this motion seeking a stay pending resolution of the Dropcam IPR. As of the date of this opposition, Arcsoft as not filed its own petition for inter partes review related to the asserted patents. In addition, despite being the party filing the Dropcam IPR, Dropcam has not sought a stay of its own litigation and that case has continued through completion of claim construction proceedings
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A decision as to whether to grant the Dropcam IPR petition will most likely be made on or after December 24, 2015.
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Denying motion to stay where IPR had not yet been granted). “There is no per se rule that patent cases should be stayed pending reexamination, because such a rule ‘would invite parties to unilaterally derail’ litigation.
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The Stage of Litigation Factor Weighs Against a Stay As pointed out in the introduction, by the time this motion is heard, the case will have been pending for ten months. While no trial date has been set, this Court has set the final pretrial conference for December 5, 2016.
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“The parties had already invested substantial resources in preparation for claim construction”). e.Digital has already completed claim construction proceedings in the related e.Digital v. Dropcam case. Given that the Dropcam case involves the same patents at issue in the present case, it is reasonable to assume that the Dropcam Court’s imminent claim construction order will streamline and possibly eliminate any claim construction disputes in the present case. More importantly, Arcsoft waited two months after the filing of Dropcam’s IPR petition to file this motion. As Arcsoft points out in its motion, the parties had notified the Court of the breakdown in settlement negotiations on the date Dropcam’s IPR petition was filed.
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Arcsoft further expended its own time and resources preparing a voluminous set of invalidity contentions along with an associated document production, which it prepared and served a month and a half after Dropcam filed its IPR.
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Given Arcsoft’s dilatoriness in filing the present motion while proceeding with costly and time-consuming Patent L.R. 3.1 through and 3.4 disclosures and preparation for claim construction, Arcsoft’s proclaimed intent to preserve time and expense associated with continued litigation is entirely specious. Finally, as argued previously, whether a stay would preserve the time and expense associated with litigation is speculative since it is uncertain whether or to what extent Dropcam’s IPR petition will be granted.
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. This is because the public policy favoring “expeditious resolutions of litigation” favors allowing litigation to proceed where the grant of a petition for IPR is speculative.“issuing a stay would disrupt the proceedings leading to trial”
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Accordingly, the delay caused by a stay would “unduly prejudice” e.Digital and would “present a clear tactical disadvantage.” Id. at *8. e.Digital should be able “to prosecute its claims, to take discovery, and to set its litigation positions, at least until such a time as the USPTO takes an interest in reviewing the challenged claims.”
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Arcsoft has not even filed a petition for IPR on its own behalf. Instead, it is relying entirely on the petition filed by Dropcam and its parent companies. However, the Dropcam District Court litigation has not been stayed and will proceed at least until the PTAB renders a decision on the petition at the end of the year.
a stay would prohibit e.Digital from obtaining any discovery from Arcsoft. This would present a clear and heavy tactical advantage in favor of Arcsoft. Based on the foregoing, this factor weighs heavily against a stay.
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Arcsoft’s motion to stay pending resolution of Dropcam’s petition for inter partes review is entirely speculative and premature. A stay would not necessarily simplify issues or avoid unnecessary expenditure of time and resources. Furthermore, a stay would prejudice e.Digital and is not in the interest of orderly justice. Arcsoft’s motion to stay should therefore be denied.
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