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Goodman v. Samsung Electronics America, Inc.

United States District Court, S.D. New York

November 22, 2017

JAMES B. GOODMAN, Plaintiff,
v.
SAMSUNG ELECTRONICS AMERICA, INC., Defendant.

          MEMORANDUM OPINION & ORDER

          John G. Koeltl District Judge.

         The defendant, Samsung Electronics America, Inc. ("SEA"), has moved to stay this patent infringement action brought by the plaintiff, James B. Goodman, pending the resolution of three petitions for inter partes review before the U.S. Patent Trial and Appeal Board (the "PTAB") filed by SEA and two non-parties to this lawsuit, Hewlett Packard Inc. ("HP") and ASUS Computer International, Inc. (''ASUS"). Goodman opposes the motion for a stay. For the reasons that follow, SEA's motion is granted.

         I.

         Unless otherwise noted, the following background facts are undisputed.

         On July 20, 2017, Goodman brought this action against SEA alleging infringement of Claim 1 of U.S. Patent No. 6, 243, 315 (the "'315 Patent"). Compl. ¶¶ 22-26. On July 28, 2017, SEA filed an unopposed motion for an extension of time to respond to Goodman's complaint. On August 1, 2017, the Court granted SEA's extension motion and extended the deadline for SEA to respond to the complaint to October 23, 2017.

         On August 24, 2017, HP filed an unrelated petition for inter partes review before the PTAB challenging the validity of Claims 1, 5, 10, and 16 of the '315 Patent. Beasley. Decl. Ex. 4, at 39-50. HP based the arguments in its August 24 petition on invalidity and prior art arguments raised in an inter partes petition that Smart Modular Technologies ("Smart Modular") had filed over a year earlier. See Beasley Decl. Ex. 5. Smart Modular's petition had caused the PTAB to institute inter partes review of the '315 Patent on February 11, 2016. Beasley Decl. Ex. 5. However, the PTAB did not resolve conclusively Smart Modular's contentions because the parties settled prior to the PTAB issuing a written decision. Beasley Decl. Ex. 6.

         On August 29, 2017, SEA filed a petition for inter partes review before the PTAB challenging the validity of Claims 1 through 20 the '315 Patent. SEA's petition raises invalidity and prior art grounds never raised before in a PTAB proceeding against the '315 Patent. Beasley Decl. Ex. 1.

         On October 12, 2017, ASUS filed a petition for inter partes review before the PTAB challenging the validity of Claims 1 through 20 of the '315 Patent on the same grounds as SEA's August 29 petition. Beasley Decl. Ex. 2. The same day, ASUS moved the PTAB to join its petition with SEA's petition. Beasley Decl. Ex. 3.

         HP's August 24, 2017, petition, SEA's August 29, 2017, petition, and ASUS's October 12, 2017, petition are currently pending before the PTAB. Goodman is required to file preliminary responses to these petitions by December, 2018. See 37 C.F.R. § 42.107(b). The PTAB is required by to decide whether to institute inter partes review based on these petitions within three months of the date when Goodman files his petition - by the end of March, 2018, at the latest. See 35 U.S.C. § 314(b).

         On October 23, 2017, SEA timely filed its answer in this action and simultaneously made the current motion to stay these proceedings until the PTAB resolves the above petitions for inter partes review of the '315 Patent.

         II.

         A federal district court has inherent power to stay an action pending inter partes review. Murata Mach. USA v. Daifuku Co., 830 F.3d 1357, 1361 (Fed. Cir. 2016); Rovi Guides, Inc. v. Comcast Corp., No. 16-cv-9278, 2017 WL 4876305, at *3 (S.D.N.Y. Oct. 27, 2017) .

         Three factors generally guide a court's discretion in deciding whether to issue a stay in these circumstances: "(1) whether a stay will simplify the issues in question and trial of the case; (2) the stage of the proceedings; and (3) whether a stay will prejudice the nonmoving party." Rovi Guides, Inc., 2017 WL 4876305, at *3 (quoting Straight Path IP Grp., Inc. v. Verizon Commc'ns Inc., No. 16-CV-4236, 2016 WL 6094114, at *2 (S.D.N.Y. Oct. 18, 2016)).[1] A court may also consider the overall ...


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