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Apple v Samsung II - Parties File Joint Status Report: To Stay or Not to Stay ~pj Updated: Not
Friday, March 08 2013 @ 12:08 PM EST

Apple and Samsung, at the judge's request, have filed their joint status report [PDF] on the theme of whether the judge should stay Apple v. Samsung II until after the appeals court rules on Apple's appeal of Apple v. Samsung I. It's a joint report, filed together, but they agree on nothing. Samsung says they should wait; Apple says they shouldn't. Apple says that the two cases are distinct, with Apple II involving none of the same patents and "virtually none" of the same Samsung products.

Virtually none isn't none, so Apple adds that the only reason there is any real overlap is because Samsung "chose to accuse some of the same products in both cases." Like that doesn't count. Samsung is the counterclaim-plaintiff here. Apple says Apple shouldn't have to wait on Apple's claims just because Samsung has its own claims. "The Apple patents at issue in this case are from completely different families, cover different technologies, and solve different problems than those in the 1846 Case. None of the 1846 Case appeals, therefore, will resolve any issue affecting claim construction, infringement, or validity of the patents asserted in this case."

Not the world's best argument, unless you think the judge is willing to split the cases up. And if we can safely say that there is a judge who has had enough of the demands of both Apple and Samsung, I think we may say it is Judge Lucy Koh. But Apple wants to stop Samsung's new products from infringing Apple's patents, as it sees it, not the old ones in Apple v. Samsung I (where it wants an injunction -- hence the pending appeal), because it wants to avoid "irreparable harm" to Apple. That's a magic phrase that might work. Samsung keeps launching new products -- Apple calls it a "relentless launch" of infringing devices causing harm to Apple. That's the same as saying Apple can't compete as things now stand.

Samsung counters that there is too an overlap, not only in products but in legal facts and theories. Why risk having a do-over, if the appeals court rules that the judge is making errors that implicate how discovery and the trials are being administered or everyone is following legal theories the appeals court knocks down?

A court's discretion to stay a case is limited, Apple asserts. So that means it will likely appeal if she does so. As for the filed appeal in Apple I, Apple says it will probably be ruled on before Apple II can get to trial, even without a stay. But Samsung uses that same trial date -- two years off already -- to argue that a stay really won't harm anyone.

Samsung wants a stay. It will "promote judicial economy, avoid wasting the time of the Court and the jury, and provide the parties and the Court with the benefits of the Federal Circuit’s views on common legal and factual issues." There may not be a lot of overlapping products, but there are overlapping issues. It says the court has "broad discretion to stay cases", and it cites several cases in support of the theme that a court can stay just to achieve efficiency and one case, Meijer, Inc. v. Abbott Laboratories, that ruled that it would be a waste of time and resources to go through "expert discovery, entertain case-dispositive motions and proceed to trial, only to have to do it all again because the experts, the parties and the Court were proceeding under a legal framework that the Ninth Circuit determined did not apply."

Apple has filed its appeal in Apple I, but Samsung hasn't yet, but it intends to. Specifically, it says it will appeal the denial of Samsung's motion for judgment as a matter of law regarding Apple doing the "required limitation-by-limitation analysis for only one of the accused products", one of the 24, and "relying on brief demonstrative videos" for the other 23 products -- which the judge ruled was sufficient. Samsung disagreed then and it intends to appeal that ruling. The current case, Samsung says, "foreshadows an identical issue of trial procedure" due to similar time constraints. Or, if Apple intends to prove infringement against all the products in this suit, and Apple says it will be, the trial date could be rescheduled, Samsung offers. That is the same as a stay, one can't help but think, in theory at least.

In footnote 5, Samsung answers Apple's claim that there is a lack of overlap:

5 Apple articulates one argument against the stay: the lack of overlap of patents, products, and claim construction positions between the prior and the current actions. Apple is incorrect as to products: not only do both actions concern smartphones and tablets generally, but at least 4 Samsung products and at least 5 Apple products are accused in both cases. The fact that the asserted patents have different patent numbers is beside the point because the overarching legal issues here support a stay. Finally, Apple’s attempt to portray the prior action as a “design” case is unavailing. In that case, Apple asserted 8 utility patents just as it does here.
And additionally, Samsung points out that Apple's '647 patent is undergoing reexamination and an appeal to the Federal Circuit in the Apple v. Motorola litigation, which also supports a stay "as to that patent". And Apple's FRAND claims here are the same as before -- claims that the jury in Apple I rejected but that Apple likely will appeal. Other cases are on appeal on that issue:
7 In addition, given the number of cases involving FRAND issues that are currently or likely to soon be on appeal to the Federal Circuit (see e.g. Microsoft Corp. v. Motorola Inc., Case No. 10-cv-1823 (W.D. Wash.); Apple Inc. v. Motorola Inc., Case No. 11-cv-178 (W.D. Wis. ); Motorola Inc. v. Apple Inc. (ITC Investigation No. 337-TA-745); Samsung v. Apple Inc. (ITC Investigation No. 337- TA-794)), it is likely that the Federal Circuit will clarify the law relating to FRAND commitments in a way that could be significant here.
There's also the advisability to stay to let the appeal court review the court's damages order, as Apple seems to indicate an intention to use the same notice date that the court in Apple I ruled was the wrong date.

In short, they agree on nothing. But considering that the judge herself asked for this report, she is at least considering that it might well make sense to stay this case until all the complexities can be narrowed by hearing from the Federal Circuit in all the appeals. That's Samsung's hope, anyway, and if she is so inclined, it has provided numerous reasons to do so.

Here's the docket entry:

03/07/2013 - 393 - STATUS REPORT Joint Status Report by Apple Inc.(a California corporation). (Lyon, Hervey) (Filed on 3/7/2013) (Entered: 03/07/2013)

[ Update: Not stay, the judge rules, but she tells them to cut back again on the claims:
394 Filed & Entered: 03/08/2013
ORDER REGARDING STAY AND CASE NARROWING AND CONTINUING THE CASE MANAGEMENT CONFERENCE. Signed by Judge Lucy H. Koh on 3/08/2013. (lhklc3, COURT STAFF) (Filed on 3/8/2013)
"If circumstances change," she writes, "the Court will notify the parties." The court has broad discretion, she adds, not narrow. And speaking of narrow, she would like, for starters, that the parties streamline the issues "significantly":
As this case proceeds, the Court will require the parties to streamline the issues raised in this action significantly. Therefore, within ten days after the Court issues its Claim Construction Order, the parties will be required to limit their asserted patent claims and accused products to twenty-five per side. In addition, the parties will be required to further narrow their asserted patent claims and accused products as well as limit their prior art references: before the close of expert discovery, before the Court considers any motions for summary judgment, after the Court rules on any motions for summary judgment, and again before the pretrial conference. Further, the parties will be required to limit the number of consulting and testifying experts. Unlike in the 1846 Case, the Court will not permit the parties to involve over fifty experts in this litigation.
As a result, the case management conference scheduled for March 27 is not happening. Instead, it will be on April 24th at 2 PM, and in the parties' joint case management statement, the parties are to let the court know the cuts they plan to make consistent with her order. And she orders Samsung not to file a motion to stay. This is the answer.

This is the kind of order that makes neither side happy. Yes, Apple gets to go forward. No doubt the magic words about irreparable harm effectuated that. That plus Samsung telling the judge it doesn't like her earlier orders in Apple I and plans to appeal them. But look at it from Apple's standpoint. It said that Samsung keeps coming out with a flood of new products and it wants to make it stop to avoid irreparable harm to Apple. But that is what Samsung does -- put out endless numbers of new products every year, something for every taste and pocketbook. That's Samsung's signature. And they aren't going to stop that, one assumes.

But at the same time that she orders full steam ahead (the trial is scheduled for two years from now, so full steam ahead is maybe overstating it), the judge orders Apple (and Samsung) to cut back on its claims, the number of its consulting and testifying experts, etc. In effect, she is saying that Apple can try to block *some* of Samsung's products, but not *all* of them. I don't really see how that solves Apple's stated problem. Samsung is playing defense, so they don't care if they have to cut back, because it plays out the same to them in that Apple has to too. From Samsung's standpoint, depending on whether the order is to drop claims with prejudice, this could be better than a stay with respect to the claims that Apple ends up having to drop. At the worst, it is a stay on those claims. - End Update.]

Here it is as text:

*****************

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN JOSE DIVISION

__________

APPLE INC., a California corporation,

Plaintiff,

v. SAMSUNG ELECTRONICS CO., LTD., a
Korean corporation; SAMSUNG ELECTRONICS
AMERICA, INC., a New York corporation; and
SAMSUNG TELECOMMUNICATIONS
AMERICA, LLC, a Delaware limited liability
company,

Couterclaim-Plaintiffs,

v. APPLE INC., a California corporation,

Counterclaim-Defendant.
____________________

During the February 14, 2013 hearing, the Court requested that the parties meet and confer regarding whether they would agree that a stay of this litigation was appropriate pending resolution of the appeal of the parties’ separate litigation in Civil Action No. 11-cv-01846-LHK (the “1846 Case”). The parties have met and conferred, and disagree on the appropriateness of a stay. Below are the parties’ respective positions.

I. Apple’s Position

There is no basis for a stay of this proceeding pending final resolution of the 1846 Case, and a stay would seriously and irreparably prejudice Apple. Aside from the parties involved, there is essentially no overlap between Apple's patent claims in this case and the 1846 Case: the two cases involve none of the same patents (or even patent families), none of the same accused functionality, and virtually none of the same Samsung products. To the extent that there is any real overlap at all, it is solely because Samsung chose to accuse some of the same products in both cases; but neither the law nor equities support staying Apple’s claims against Samsung’s new infringing products just because Samsung asserted counterclaims regarding certain overlapping products.

Indeed, in filing this case, Apple carefully selected patents and technologies that did not overlap with those at issue in the 1846 Case, and has focused on Samsung’s infringing products not at issue in the 1846 Case. Apple filed this case to stop – immediately, by way of a preliminary injunction – Samsung’s new infringing devices, which Samsung has continued to launch despite this Court’s preliminary injunction findings that Apple had shown that it was likely to succeed on infringement and validity and that Samsung’s efforts to capitalize on Apple’s technology during a critical time in the market would cause Apple irreparable harm. Because those facts have not changed, and Samsung’s willful infringement is continuing, this case must proceed now, in order to stop the ongoing sales – and relentless launch – of Samsung’s latest infringing devices, which have caused, and every day continue to cause, continuing harm to Apple.

Given the absence of overlap between the two cases, and the severe prejudice Apple would suffer, a stay is not appropriate. In fact, a court’s discretion to stay a case is limited; courts must balance (1) simplification of issues, if any, that could result, (2) possible damage a party may suffer during a stay, and (3) any hardship a party may suffer in the absence of a stay. CMAX, Inc. v. Hall, 300 F.2d 265, 268 (9th Cir. 1962). Here, none of the factors favors a stay.

A stay will not simplify the issues considering that the claim construction, infringement, and validity issues in this case bear virtually no relationship to those in the 1846 Case.

Apple would indisputably suffer serious and unfair damage as a result of stay. Samsung has continued to sell and launch infringing products despite the pendency of this case and the verdict in the 1846 Case. As this Court found, Samsung and Apple fiercely compete “for critical first-time smartphone buyers. . . whose first purchasing decisions will largely predict

1

their operating system allegiance for future purchases.” (D.I. 221, at 72.) Apple has already shown that it is likely to succeed on infringement and validity with respect to at least some of the patents in this case. Any delay in resolution of this case will severely harm Apple.

Samsung will suffer no hardship absent of a stay. Samsung has litigated this case for over a year, and until the Court broached the issue two weeks ago, Samsung never raised it. “If there is even a fair possibility that the stay . . . will work damage to [Apple],” Samsung “must make out a clear case of hardship or inequity.” Lockyer v. Mirant Corp., 398 F.3d 1098, 1112 (9th Cir. 2005). Samsung has identified no hardship and no inequity – because there is none. As a result, a stay is unwarranted, and in the event Samsung moves for a stay, Apple would oppose.

A. A Stay Would Not Simplify the Issues in This Case

A stay of this case pending the appeal of the 1846 Case would not simplify this case. The Apple patents at issue in this case are from completely different families, cover different technologies, and solve different problems than those in the 1846 Case. None of the 1846 Case appeals, therefore, will resolve any issue affecting claim construction, infringement, or validity of the patents asserted in this case. See LG Elecs., Inc. v. Eastman Kodak Co., No. 09-cv-344, 2009 WL 1468703, *4 (S.D. Cal. May 26, 2009) (denying a stay because the patents in the co-pending proceeding were unrelated and “the inventions explicitly have different goals”).1 Further, of the 23 accused Samsung products here, only two are at issue in the 1846 Case, and the accused features of those products differ completely. In fact, the Samsung products in this case are primarily newly released products—based on recently released versions of Android source code—that Samsung continues to sell despite findings by this Court that Samsung likely infringes Apple’s patents.

Recognizing the absence of any relationship between Apple’s claims here and those in the 1846 Case, during the parties’ meet and confer, Samsung argued for a stay because of overlap in certain of the Apple products accused of infringing Samsung’s patents and certain legal issues associated with two standards-essential patents that Samsung elected to assert among the eight Samsung patents-in-suit. But any such overlap in Samsung’s claims is a problem of Samsung’s

2

making and does not warrant a stay of Apple’s claims, which do not overlap. Samsung also argued that the 1846 Case is “related” to this action and that the parties have agreed to cross-use discovery. However, the fact that the two cases involve “substantially the same parties” and “may involve part of the same subject matter,”2 says nothing about any potential simplification a stay would bring. Moreover, the presence of a cross-use agreement counsels against a stay. LG Elecs., 2009 WL 1468703, at *4 (noting that any potential duplicative discovery efforts could be reduced if the parties entered an agreement to cross-use discovery). In any event, pre-trial discovery closed long ago in the 1846 Case, thus there is little potential for duplicative discovery. Additionally, during the meet-and-confer, Samsung asserted that in the 1846 Case appeal it may challenge Apple’s ability to prove infringement through “representative products.” That challenge, based on a mischaracterization of the 1846 Case’s factual record, says nothing about an entirely different set of patents, products, and evidence; even so, Apple does not intend to demonstrate infringement of all products merely by examining representative products in this case, so any such concerns are misplaced.

Finally, during the claim construction hearing, reference was made to the separately pending “injunction” appeal at the Federal Circuit. Notably, that appeal will most likely conclude in less than a year and before the trial in this case.3 Thus, this case can continue on schedule, and the Court will still have the benefit of any decision by the Federal Circuit clarifying the standard for a permanent injunction. Further, because the Federal Circuit will base its 1846 Case decision on the 1846 Case factual record alone, the outcome of the 1846 Case appeal will not be dispositive of Apple’s request for an injunction or any other form of relief here.

In short, Samsung cannot point to any potential for simplification that supports a stay.

B. Apple Would Be Substantially Harmed by a Stay

As noted above, a stay would inflict substantial harm on Apple. This Court already found that absent an injunction against Samsung’s sale of just one of the accused products (the Galaxy Nexus

3

smartphone), Apple will likely suffer a long-term loss of market share and of downstream sales. (D.I. 221 at 78.) While the Federal Circuit held that Apple had not shown a sufficient causal nexus to obtain a preliminary injunction, it did not reverse this Court’s findings that Apple is suffering an irrecoverable loss of market share and downstream sales. Nor did it reverse this Court’s finding that (1) the smartphone market is at a “critical juncture,” (2) “Apple and Samsung have established themselves as fierce competitors in the smartphone market,” (3) Apple’s “risk of lost sales is more than merely speculative or conjectural,” and (4) Apple presented “compelling circumstantial evidence” that it is also losing downstream sales as a result of Samsung’s infringement—sales that are “both long-term and difficult to calculate.” Id. at 2, 66, 76.

Any stay that would postpone the trial beyond the currently scheduled trial date will leave Apple in a substantially worse position because Samsung will continue to capture first-time smartphone buyers with continued sales of accused infringing products as well as sales of additional newly launched infringing products. This Court’s findings in the preliminary injunction proceedings are more than sufficient to establish at least a “fair possibility” that a stay would damage Apple.

C. Samsung Can Demonstrate No Cognizable Hardship if the Case Proceeds

Finally, Samsung can identify no harm that it will suffer absent a stay; Samsung did not even raise the issue. To support a stay, Samsung “must make out a clear case of hardship or inequity ... if there is even a fair possibility that the stay . . . will work damage” on Apple. Lockyer, 398 F.3d at 1112 (quoting Landis, 299 U.S. at 255) (emphasis added). As this Court has already found, there is much more than just a “fair possibility” of damage to Apple—there is substantial, and possibly irreparable, harm. And the only “harm” Samsung could possibly articulate is the cost of continuing to litigate. But simply “being required to defend a suit does not constitute a clear case of hardship or inequity within the meaning of Landis.” Lockyer, 398 F.3d at 1112 (internal quotation marks omitted). Samsung has purposefully continued to launch infringing products, and cannot now complain that it must account for that infringement in a timely manner.

For all these reasons, the Court should not stay this action. To the extent the Court continues to consider a stay, the Court should order Samsung to file an appropriate motion so that Apple has a full and fair an opportunity to brief the issue and provide all relevant evidence.

4

II. Samsung’s Position

This Court should stay the current case, Apple v. Samsung II, pending the resolution of the appeals from this Court’s post-trial orders in Apple v. Samsung I. A stay will promote judicial economy, avoid wasting the time of the Court and the jury, and provide the parties and the Court with the benefits of the Federal Circuit’s views on common legal and factual issues. A stay will not prejudice either party. It will also allow the parties to attempt to reach a business resolution of their disputes. District courts have broad discretion to stay cases, especially where, as here, there are overlapping issues that will be resolved in a pending appeal.4

As the Court is aware, the parties entered into a cross-use stipulation providing that discovery taken in the prior action may be used as if obtained in this action. See Dkt. No. 84. That stipulation was based on a recognition by both parties that there is substantial overlap between this case and the prior case before the court. As set forth below, this overlap counsels in favor of staying this action until the prior litigation reaches conclusion.

A. Utility Patent Infringement

Apple’s assertion of patent claims against every possible Samsung device will create identical legal issues of trial procedure and the burden of proving patent infringement, and it will save this Court considerable time and energy to stay this case pending Samsung’s appeal. At trial in 2012, Apple asserted three utility patents against 24 Samsung products. With only 25 hours of allotted trial time, Apple performed the required limitation-by-limitation analysis for only one of the accused products. For the remaining 23 products, Apple relied only on brief demonstrative videos, and

5

providing the devices to the jury. See Apple, Inc. v. Samsung Elecs. Co., Ltd., No. 11-cv-1846, Dkt. No. 2013, at 13 (N.D. Cal. Oct. 2, 2012). In denying Samsung’s motion for judgment as a matter of law, the Court found Apple’s presentation sufficient to meet its burden. See id., Dkt. No. 2220, at 15. Samsung intends to appeal this ruling.

The current case foreshadows an identical issue of trial procedure. Currently, Apple is asserting numerous claims from eight utility patents against 24 Samsung products—including some of the same products at issue in the first litigation. Dkt. No. 380.5 Even with significant narrowing after the Claim Construction Order, Apple will be unable to meet its burden of proving infringement without resorting to the same improper “representative product” strategy. See L&W, Inc. v. Shertech, Inc., 471 F.3d 1311, 1318 (Fed. Cir. 2006). Indeed, the current case schedule provides less time for Apple to put on its infringement case.

Staying the instant case, in expectation of Federal Circuit guidance on the propriety of Apple’s trial strategy, will save judicial resources by allowing the Court and the parties to focus on the most important claims and products at issue.6 Alternatively, if Apple intends to attempt proof of infringement against all the Samsung products currently in suit, the trial date could be rescheduled to accommodate the scale of the case Apple intends to prosecute.

B. Standards Disclosure, FRAND, and Antitrust

Apple’s counterclaims regarding disclosure of essential IPR to ETSI, FRAND licensing, antitrust, and exhaustion, implicate identical legal issues with the previous case, and further merit a stay. In both cases, Samsung asserts two declared essential UMTS patents. The jury found that Samsung had not breached any contractual obligations it might owe to ETSI or its members, either by failing to timely disclose IPR during the creation of the UMTS standard, or by failing to uphold its

6

commitment to license its declared-essential portfolio on FRAND terms. Further, the jury rejected Apple’s claim that Samsung had violated Section Two of the Sherman Act. Finally, the Court overturned the jury’s finding of exhaustion. Apple will likely appeal these issues.7

Although the facts differ slightly from the previous case to the instant, Apple’s standards-based theories are built on identical legal frameworks and implicate numerous overlapping legal issues. For example, Apple claims rely on: whether inventors and standards-meetings participants have a duty to disclose IPR during 3GPP working group meetings; whether 3GPP members have a duty to disclose non-public patent applications; what the appropriate framework for determining a FRAND rate is; whether and to what extent declared-essential patents may be enforced when Apple rejected Samsung’s offer to license and refused to engage in meaningful negotiation; whether antitrust markets may be properly defined by reference to a single declared-essential patent; and whether exhaustion applies to events occurring outside the U.S. under expired or otherwise inapplicable contracts. Staying this case until the Federal Circuit decides these issues will allow the Court to approach this case with a settled legal framework and appropriately deal with the preclusive effects of the previous case.

C. Remedies

Staying the action would permit appellate review of the Court's March 1, 2013 Order re: Damages in N.D. Cal. I. See Apple, Inc. v. Samsung Elecs. Co., Ltd., No. 11-cv-1846, Dkt. No. 2271 (N.D. Cal. Mar. 1, 2013). While Apple's interrogatory responses are woefully deficient, it is clear that as to at least one patent in this action, Apple intends to claim notice required by 35 USC §287(a) was provided at the same August 4, 2010 meeting that Apple relied on in the prior action. See id. at 15, 17; Apple's Responses to Samsung's First Set of Interrogatories at 8 (referring to "August 2010 meeting" as providing notice as to the '647 patent, providing no substantive response as to six other

7

Apple patents asserted). If Apple intends to rely on that August 2010 meeting as a basis for notice on the other 7 patents it is asserting, it should tell the Court now. To the extent that Apple intends to appeal the portion of the March 1, 2013 Order addressing notice, the resolution of that appeal is critical to the calculation of damages in this action if Apple intends to assert that notice was given at the August 4, 2010 meeting.

Finally, a stay is unlikely to have any significant negative impact on the parties’ claims for injunctive relief. Given that trial is already set two years from the filing date, any incremental delay resulting from a stay is unlikely to materially alter the effectiveness of an injunction. Additionally, the parties' Motions for Judgment as a Matter of Law in Apple v. Samsung I have now been adjudicated, and stand ready for appellate review as appropriate.

In summary, the stay is both warranted and will not prejudice either party.

8

Dated: March 7, 2013

GIBSON, DUNN & CRUTCHER LLP

By: /s/ H. Mark Lyon
H. Mark Lyon

Attorneys for Plaintiff Apple Inc.

QUINN EMANUEL URQUHART &
SULLIVAN LLP

By: /s/ Victoria Maroulis
Victoria Maroulis, with permission

Attorneys for Defendants Samsung
Electronics Co., Ltd., Samsung Electronics
America, Inc., and Samsung
Telecommunications America, LLC

Dated: March 7, 2013

______________
1 By contrast, courts have granted stays where the co-pending case would likely implicate or dispose of critical substantive issues in the stayed case. See, e.g., CMAX, 300 F.2d at 269 (the co- pending proceedings would “provide a means of developing comprehensive evidence bearing upon the highly technical ... questions which are likely to arise in the district court case”); Alzheimer’s Inst. Of America v. Elan Corp. PLC, No. C-10-482, 2011 WL 6748634, *2 (N.D. Cal. Dec. 22, 2011) (staying patent case in favor of co-pending proceeding regarding standing which was “potentially dispositive of [the] entire action”).

2D.I. 003 (Apple Notice of Pendency of Other Action or Proceeding).

3 Federal Circuit statistics indicate that this appeal will be resolved in less than a year. See http://www.cafc.uscourts.gov/images/stories/the-court/statistics/Median_Disposition_Time_ Table_2003-2012.pdf.

4 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.”); Mediterranean Enterprises, Inc. v. Ssangyong Corp., 708 F.2d 1458, 1465 (9th Cir. 1983) ("A trial court may, with propriety, find it is efficient for its own docket and the fairest course for the parties to enter a stay of an action before it, pending resolution of independent proceedings which bear upon the case.") (quoting Leyva v. Certified Grocers of California, Ltd., 593 F.2d 857, 864 (9th Cir.)); Meijer, Inc. v. Abbott Laboratories, C 07-5985 CW, 2009 WL 723882 (N.D. Cal. Mar. 18, 2009) ( finding that "[i]t would be an extraordinary waste of time and money to conduct expert discovery, entertain case-dispositive motions and proceed to trial, only to have to do it all again because the experts, the parties and the Court were proceeding under a legal framework that the Ninth Circuit determined did not apply."); Zoran Corp. v. DTS, Inc., C 08-4655 JF (HRL), 2009 WL 160238 (N.D. Cal. Jan. 20, 2009) (staying case pending decision on common FRAND issues by different tribunal).

5 Apple articulates one argument against the stay: the lack of overlap of patents, products, and claim construction positions between the prior and the current actions. Apple is incorrect as to products: not only do both actions concern smartphones and tablets generally, but at least 4 Samsung products and at least 5 Apple products are accused in both cases. The fact that the asserted patents have different patent numbers is beside the point because the overarching legal issues here support a stay. Finally, Apple’s attempt to portray the prior action as a “design” case is unavailing. In that case, Apple asserted 8 utility patents just as it does here.

6 Separately, the ‘647 patent is currently subject to reexamination and an appeal to the Federal Circuit in the Apple v Motorola action, further supporting the stay as to that patent.

7 In addition, given the number of cases involving FRAND issues that are currently or likely to soon be on appeal to the Federal Circuit (see e.g. Microsoft Corp. v. Motorola Inc., Case No. 10-cv- 1823 (W.D. Wash.); Apple Inc. v. Motorola Inc., Case No. 11-cv-178 (W.D. Wis. ); Motorola Inc. v. Apple Inc. (ITC Investigation No. 337-TA-745); Samsung v. Apple Inc. (ITC Investigation No. 337- TA-794)), it is likely that the Federal Circuit will clarify the law relating to FRAND commitments in a way that could be significant here.

9

CERTIFICATE OF SERVICE

I hereby certify that a true and correct copy of the above and foregoing document has been served on March 7, 2013 to all counsel of record who are deemed to have consented to electronic service via the Court’s CM/ECF system per Civil Local Rule 5.4.

Dated: March 7, 2013

By: /s/ H. Mark Lyon


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