3:22-cv-00412
S.D. Cal.Oct 7, 2024Background
- Samesurf, Inc. sued Intuit, Inc. in March 2022 for alleged infringement of three patents related to co-browsing technology used in Intuit’s products.
- In December 2022, Intuit filed inter partes review (IPR) petitions challenging the validity of all asserted patent claims.
- The District Court stayed the case in June 2023 pending the outcome of the IPR proceedings.
- In June 2024, the Patent Trial and Appeal Board (PTAB) issued final written decisions: upholding the '448 patent’s claims as valid, but invalidating the '145 and '591 patent claims.
- Samesurf moved to lift the stay after the PTAB’s decisions; Intuit appealed the '448 patent ruling but lost a request for direct PTAB review and has a pending appeal with the Federal Circuit.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether to lift the litigation stay post-IPR | Enough time has passed, issues resolved; continuing the stay prejudices plaintiff’s rights. | The appeal of the '448 patent is pending; maintaining the stay could simplify or resolve the litigation. | Stay lifted; pending appeal alone does not justify further delay. |
Key Cases Cited
- Ethicon, Inc. v. Quigg, 849 F.2d 1422 (Fed. Cir. 1988) (district courts have inherent power to manage their dockets and may stay/lift proceedings pending patent office review)
- Clinton v. Jones, 520 U.S. 681 (1997) (broad discretion for courts in managing case stays)
- Murata Machinery USA v. Daifuku Co., 830 F.3d 1357 (Fed. Cir. 2016) (courts may lift a stay if changed circumstances render the stay inappropriate)