Largan Precision Co, LTD v. Motorola Mobility, LLC.
4:21-cv-09138
N.D. Cal.Jul 26, 2022Background
- Largan Precision sued Motorola (N.D. Cal., No. 21-cv-09138) alleging infringement of six patents (the Asserted Patents).
- Motorola filed six IPR petitions challenging 74 of 75 asserted claims across five of the six patents and stipulated it will not assert in district court any grounds raised or reasonably could have been raised in the IPRs if instituted.
- The case was at an early stage: initial disclosures and contentions exchanged, limited document production, no depositions, claim construction briefing not yet begun (hearing set for Sept. 22, 2022), and no trial date set.
- Largan argued the stay should be denied because the PTAB had not yet instituted review, Motorola failed to identify alleged real parties in interest (Sunny Optical and Lenovo), and Motorola’s supplier-related discovery was needed for settlement and to define infringement scope.
- The Court granted Motorola’s motion to stay pending IPR resolution, denied Largan’s request for discovery carve-outs, and denied leave to file a sur-reply. The parties must file a joint status report by Jan. 23, 2023; Largan may later move to lift the stay.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether to stay the district action pending IPR | Stay speculative because PTAB has not instituted review | Stay appropriate; IPR could simplify or moot most asserted claims | Court granted stay |
| Whether absence of PTAB institution decision defeats stay request | Denied relief until PTAB acts; institution uncertainty makes simplification speculative | Courts may grant stay before institution to avoid wasted resources | PTAB institution uncertainty alone does not defeat stay |
| Whether Motorola’s failure to identify Sunny/Lenovo as real parties in interest precludes stay/estoppel | Missing RPI designation will prevent institution and remove estoppel; thus court should deny stay | RPI challenge is for the PTAB; Motorola identified itself and would be estopped; RPI issues do not prevent stay here | Court rejected RPI argument as reason to deny stay; left RPI disputes to PTAB |
| Whether discovery into suppliers/non-accused products should be permitted despite stay | Supplier discovery needed to assess infringement scope and settlement; risk of spoliation | Discovery into non-accused products not justified without a reasonable belief such products exist; spoliation claims speculative | Court denied carve-out for supplier discovery and found spoliation concerns speculative |
| Whether to allow Largan to file a sur-reply after briefing closed | Sur-reply needed to respond to Motorola’s reply and aid court decision | Sur-reply not permitted by local rules and no good cause shown | Court denied leave to file a sur-reply |
Key Cases Cited
- Ethicon, Inc. v. Quigg, 849 F.2d 1422 (Fed. Cir. 1988) (courts have inherent authority to stay proceedings pending PTO reexamination)
- VirtualAgility, Inc. v. Salesforce.com, Inc., 759 F.3d 1307 (Fed. Cir. 2014) (articulating factors for stays pending IPR)
- Slip Track Sys., Inc. v. Metal Lite, Inc., 159 F.3d 1337 (Fed. Cir. 1998) (reexamination outcome can simplify or eliminate district claims)
- Finjan, Inc. v. Symantec Corp., 139 F. Supp. 3d 1032 (N.D. Cal. 2015) (stay appropriate where PTAB review may simplify district litigation)
- Telemac Corp. v. Teledigital, Inc., 450 F. Supp. 2d 1107 (N.D. Cal. 2006) (length of reexamination alone does not constitute undue prejudice)