Opinion
20-CV-08624-LHK
08-26-2021
ABCELLERA BIOLOGICS INC, et al., Plaintiffs, v. BERKELEY LIGHTS, INC., Re Dkt. No. 103 Defendant.
ORDER GRANTING MOTION TO STAY CASE PENDING INTER PARTES REVIEW Re: Dkt. No. 103
LUCY H. KOH United States District Judge
Before the Court is Defendant Berkeley Lights, Inc.'s (“Defendant”) Motion to Stay Case Pending Inter Partes Review (“IPR”) filed on July 25, 2021. ECF No. 103 (“Mot.”). Defendant states that it has timely filed three petitions for IPRs with the Patent Trial and Appeal Board (“PTAB”) at the U.S. Patent and Trademark Office challenging nearly all the asserted claims of three patents-in-suit as invalid. Id. at 2. Plaintiff AbCellera Biologics Inc. (“Plaintiff”) opposed on August 5, 2021. ECF No. 114. Defendant filed a reply on August 12, 2021. ECF No. 118. Having considered the parties' submissions, the relevant law, and the record in this case, the Court GRANTS Defendant's motion and STAYS the instant case until resolution of the IPRs.
The power to stay proceedings in a case is a matter within the Court's discretion. See Good v. Prudential Ins. Co. of Am., 5 F.Supp.2d 804, 806 (N.D. Cal. 1998) (citing Landis v. Am. Water Works & Elec. Co., 299 U.S. 248, 254-55 (1936)). “Courts have inherent power to manage their dockets and stay proceedings, including the authority to order a stay pending conclusion of a PTO reexamination.” Finjan, Inc. v. Symantec Corp., 139 F.Supp.3d 1032, 1035 (N.D. Cal. 2015) (quoting Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1426-27 (Fed. Cir. 1988)). Courts have recognized “a liberal policy in favor of granting motions to stay proceedings pending the outcome of USPTO reexamination or reissuance proceedings.” Id. (citation omitted).
Courts consider three factors when determining whether to grant a stay pending IPR. The first factor is whether the litigation has progressed significantly enough for a stay to be disfavored. See AT&T Intellectual Prop. I v. Tivo, Inc., 774 F.Supp.2d 1049, 1052 (N.D. Cal. 2011) (granting stay where parties had not exchanged expert reports and court had not held claim construction hearing). Here, the parties have not yet filed any of their claim construction briefs, which demonstrates that the case is still in its early stages. ECF No. 99 (“Case Management Order”). Additionally, the parties are still at the beginning of fact discovery. According to Defendant, Plaintiff had produced only 261 documents as of August 5, 2021. ECF No. 118-1.
The second factor is whether granting a stay could simplify the litigation. Finjan, 139 F.Supp.3d at 1035 (citation omitted). “A stay may also be granted in order to avoid inconsistent results . . . or avoid needless waste of judicial resources.” Evolutionary Intelligence LLC v. Apple, Inc., 2014 WL 93954, at *2 (N.D. Cal. Jan. 9, 2014). Here, Plaintiff has asserted seven patents, including U.S. Patent No. 10, 087, 408 and two related patents (“the '408 family”). Because the pending IPRs could result in invalidation of all the asserted claims of the '408 family, the second factor weighs in favor of a stay. Although the PTAB has not yet instituted the IPRs, courts routinely stay lawsuits pending institution decisions. PersonalWeb Tech., LLC v. Apple Inc., 69 F.Supp.3d 1022, 1027 (N.D. Cal. 2014).
Finally, the third factor-whether a stay prejudices Plaintiff or gives Defendant a clear tactical advantage-does not weigh against a stay at this early litigation stage. Id. at 1029 (collecting cases for proposition that “delay necessarily inherent in any stay” does not constitute undue prejudice). Moreover, Defendant filed its motion to stay just two weeks after filing its IPR petitions, and there is no evidence of gamesmanship on Defendant's part. See Mot. at 3.
Therefore, the Court, in its discretion, hereby STAYS the case until the Court orders otherwise. The parties shall inform the Court within two business days of the PTAB's completion of the three IPRs. The Clerk shall administratively close the file. This is a purely administrative procedure that does not affect the rights of the parties.
IT IS SO ORDERED.