Universal Electronics, Inc. v. Universal Remote Control, Inc.
2013 U.S. Dist. LEXIS 64154
| C.D. Cal. | 2013Background
- Plaintiff Universal Electronics, Inc. sues Defendant Universal Remote Control, Inc. for infringement of the ’426, ’906, ’067, and ’367 patents; the ’426 and ’067 patents have expired.
- Defendant filed Notices of Intent to File Petitions for Inter Partes Review on January 22, 2013 and then filed three IPR petitions (one for each of the ’426, ’906, and ’067 patents) in February 2013.
- A Markman hearing occurred, and the Court issued a claim construction order that invalidated the only relevant claim in the ’367 patent.
- The parties engaged in limited discovery; discovery schedule placed after claim construction, and the court had devoted substantial resources to claim construction.
- Defendant moved to stay pending PTO review; Plaintiff opposed and the Court denied the stay, applying the traditional stay factors and totality-of-circumstances analysis.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether a stay pending IPR is appropriate. | Universal Electronics argues against a stay given market-risk and ongoing litigation. | Universal Remote contends IPR could simplify issues and the patents are under review. | Denied stay; factors and totality weigh against stay. |
| Stage of the proceedings and readiness for trial. | Case has a trial date and substantial proceedings have occurred. | Discovery is limited but the stage weighs in favor of a stay due to PTO review. | Factors weigh against a stay. |
| Potential simplification of issues from IPR. | Uncertainty about grant/denial of petitions and timing complicates simplification. | IPR could invalidate or narrow claims, simplifying trial through estoppel. | Undecided petitions; potential simplification weighs in favor of a stay, but not enough here. |
| Prejudice to plaintiff from staying litigation. | Direct competitor, potential market-share loss during stay. | Delay is commonplace and damages may compensate if plaintiff prevails. | Slight prejudice weigh against a stay. |
Key Cases Cited
- Ethicon, Inc. v. Quigg, 849 F.2d 1422 (Fed.Cir.1988) (courts have inherent docket-management power in stay analyses; broad allowance of stays in early stages)
- Aten Int'l Co., Ltd v. Emine Tech. Co., Ltd., 2010 WL 1462110 (C.D. Cal. 2010) (three-factor framework with totality-of-circumstances approach)