United States District Court, W.D. Washington, Seattle
ORDER GRANTING MOTION TO STAY
L. ROBART United States District Judge
the court is Defendants Uniloc USA, Inc. and Uniloc
Luxembourg, S.A.'s (collectively, “Uniloc”)
motion to stay this case pending inter partes review
(“IPR”) of the three patents-in-suit by the
Patent Trial and Appeal Board (“PTAB”) of the
United States Patent and Trademark Office
(“PTO”). (Mot. (Dkt. # 29); see also
Not. of Stay (Dkt. # 31).) On the same day that Uniloc filed
its motion to stay in this court, Uniloc filed a nearly
identical motion in the co-pending case in the Eastern
District of Texas, Uniloc USA, Inc., et al. v.
RingCentral, Inc., No. 2-17-cv-00354 (E.D. Tex.).
(See Resp. (Dkt. # 32) at 2.) On February 12, 2018,
the Eastern District of Texas granted Uniloc's motion to
stay pending IPR review. (See id.; see also
Not. of Stay at 2-4.) In light of the Eastern District of
Texas's decision, Plaintiffs Amazon.com, Inc. and Amazon
Web Services, Inc. (collectively, “Amazon”) do
not oppose Uniloc's motion. (See Resp. at
2.) The court has considered the parties'
submissions regarding the motion, the relevant portions of
the record, and the applicable law. Being fully advised,
court GRANTS the motion for the reasons set forth below.
BACKGROUND AND ANALYSIS
case involves three patents-in-suit: U.S. Patent Nos. 7, 804,
948 (the “'948 Patent”), 7, 853, 000 (the
“'000 Patent”), and 8, 571, 194 (the
“'194 Patent”). (Compl. (Dkt. # 1) ¶ 11;
Mot. at 2.) Uniloc filed a motion to dismiss on October 19,
2017, in part because of the first-filed co-pending case in
the Eastern District of Texas. (MTD (Dkt. # 18) at 1.) In
response, Amazon informed the court that it had moved to
transfer the Eastern District of Texas proceedings to this
court based on a forum selection clause. (MTD Resp. (Dkt. #
20) at 2.) Due in part to the pending motion to transfer in
the Eastern District of Texas, the court delayed issuing an
order regarding initial disclosures and a joint status
report. (12/8/17 Order (Dkt. # 27) (citing Fed R. Civ. P.
16(b)(2) and Local Rules W.D. Wash. LCR 16(a)).) Seven IPRs
have now been instituted that collectively involve the three
patents-in-suit. (Mot. at 3.) In addition, the Eastern
District of Texas has stayed the related case pending IPR
review. (Not. of Stay at 2, Ex. A (Dkt. # 31-1).)
have inherent power to manage their dockets and stay
proceedings, including the authority to order a stay pending
conclusion of a PTO reexamination.” Ethicon, Inc.
v. Quigg, 849 F.2d 1422, 1426-27 (Fed. Cir. 1988)
(internal citation omitted). Courts in the Ninth Circuit
“often grant stays pending [the] IPR process in light
of the ‘liberal policy in favor of granting motions to
stay proceedings pending the outcome of [PTO] reexamination
or reissuance proceedings.'” Roche Molecular
Sys., Inc. v. Cepheid, No. C-14-3228-EDL, 2015 WL
124523, at *3 (N.D. Cal. Jan. 7, 2015) (quoting
Evolutionary Intelligence LLC v. Yelp Inc., No.
C-13-03587 DMR, 2013 WL 6672451, at *8 (N.D. Cal. Dec. 18,
2013)) (collecting cases); see also Drink Tanks Corp. v.
GrowlerWerks, Inc., No. 3:16-cv-410-SI, 2016 WL 3844209,
at *2 (D. Or. July 15, 2016) (quoting Semiconductor
Energy Lab. Co. v. Chimei Innolux Corp., No. SACV
12-21-JST (JPRx), 2012 WL 7170593, at *4 (C.D. Cal. Dec. 19,
2012) (“Generally, courts apply a ‘liberal policy
in favor of granting motions to stay proceedings pending the
outcome of PTO IPR proceedings.'”)). In deciding
whether to stay litigation pending IPR proceedings, courts
examine “(1) the stage of the case; (2) whether a stay
will simplify the court proceedings; and (3) whether a stay
would unduly prejudice or present a clear tactical
disadvantage to the non-moving party.” Roche
Molecular Sys., 2015 WL 124523, at *3. Whether to grant
a stay falls within the court's discretion. Drink
Tanks, 2016 WL 3844209, at *2 (citing CANVS Corp. v.
United States, 118 Fed.Cl. 587, 591 (2014)). Here, all
three factors favor granting the stay.
this case is still at its earliest stage as the court has not
even issued an order regarding initial disclosures and a
joint status report. (See 12/8/17 Order.) Second, a
stay will likely simplify the proceedings as the PTAB has
instituted IPR review of all three patents-in-suit.
(See Mot. at 2-3.) Third, a stay would not unduly
prejudice Amazon- Amazon does not oppose the motion.
(See Resp. at 2.) Therefore, the court finds that
the relevant factors favor staying this case pending the IPR
reviews of the '948 Patent, the '000 Patent, and the
foregoing reasons, the court GRANTS Uniloc's motion (Dkt.
# 29) and STAYS this case pending final exhaustion of the IPR
proceedings to which the '948 Patent, the '000
Patent, and the '194 Patent are presently subject to. The
court ORDERS the parties to file a joint status report no
more than five (5) days after the PTAB completes the final
IPR proceeding regarding the '948 Patent, the '000
Patent, and the '194 Patent or those proceedings are
terminated in some other manner. In addition, the court
ORDERS the parties to file a joint status report on July 1,
2018, and every six (6) months thereafter until the court
lifts the stay. This stay is effective, but without
prejudice, to Uniloc's pending motion to dismiss (Dkt. #
18) and Amazon's opposition to that motion (Dkt. # 20).
 Neither party requests oral argument
on the motion (Mot. at 1; Resp. at 1) and the court
determines that oral argument would not be helpful to its
disposition of the motion. See Local Rules W.D.
Wash. LCR 7(b)(4).
 The seven IPRs include: IPR2016-01756,
IPR2017-00058, IPR2017-00198, IPR2017-00597, IPR2017-01685,
IPR2017-1683, and ...