Case 1:12-cv-00398-GMS Document 43 Filed 12/02/13 Page 1 of 2 PageID #: 1510

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE

HUMANEYES TECHNOLOGIES LTD., Plaintiff,

v.

SONY CORPORATION, SONY CORPORATION OF AMERICA, SONY ELECTRONICS INC., SONY MOBILE COMMUNICATIONS AB, AND SONY MOBILE COMMUNICATIONS (USA) INC., Defendants.

) ) ) ) ) ) ) ) ) ) ) ) ) )

Civil Action No. 12-398-GMS

ORDER

Presently before the court in the above captioned matter is defendants' Motion to Stay Litigation Pending the Outcome of Inter Partes Review of the Patents-in-Suit. 1 (DJ. 29.) A decision to stay litigation lies within the sound discretion of the court. 2 The court performs a balancing analysis using the following three factors to determine if a stay is appropriate: "(1) whether a stay would unduly prejudice or present a clear tactical disadvantage to the non-moving party; (2) whether a stay will simplify the issues in question and trial of the case; and (3) whether discovery is complete and whether a trial date has been set. " 3 After considering the parties' positions as set forth in their papers, as well as the applicable law, the court finds that a stay is
1 On March 29, 2012, the plaintiff brought the above-captioned action against the defendants alleging infringement of U.S. Patent Nos. 6,665,003and 7,477,284. (D.1. I.) 2 See Cost Bros., Inc. v. Travelers Indem. Co., 760 F.2d 58, 60 (3d Cir. 1985); Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1426-27 (Fed. Cir. 1988) (citations omitted) ("Courts have inherent power to manage their dockets and stay proceedings, including the authority to order a stay pending conclusion of a PTO reexamination."). 3 First Am. Title Ins. Co. v. McLaren LLC, No. 10-363-GMS, 2012 WL 769601, at *4 (D. Del. Mar. 9, 2012) (quoting Xerox Corp. v. 3Com Corp., 69 F. Supp. 2d 404, 406 (W.D.N.Y. 1999)).

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warranted here. The plaintiff is unlikely to suffer undue prejudice as a result of the stay. 4 Further, the issues before the court will be simplified by the ongoing inter partes review proceedings of all currently asserted claims, 5 and the fact that this case remains in an early stage 6 reinforces the prospect that a stay pending review will advance the interests of judicial economy. Accordingly, the court grants defendants' motion. IT IS HEREBY ORDERED THAT:

1.

The defendants' Motion to Stay Litigation Pending the Outcome of Inter Partes

Review of the Patents-in-Suit (D.I. 29) is GRANTED; and 2. This matter is STAYED pending resolution of the inter partes review of U.S.

Patent Nos. 6,665,003 and 7,477,284.

Dated: December )... , 2013

4 The timing of the inter partes review petitions and motion to stay present no evidence that the defendants sought an unfair tactical advantage. The defendants filed the inter partes petitions five months after termination of a parallel ITC action, and the motion to stay was filed three weeks after the petitions. (DJ. 30 at 12.) Additionally, the parties are not direct competitors, (DJ. 34 at 19), and HumanEyes can be adequately remedied for any delay by "money damages, including any appropriate interest accrued during the stay." In re Bear Creek Techs. Inc., No. 12md-2344-GMS, 2013 WL 3789471, at *3 n.8 (D. Del. Jul. 17, 2013). 5 The Patent Trial and Appeal Board ("PTAB") granted defendants' petitions and has instituted inter partes review of all asserted claims. (D.1. 42 at 1-2.) As such, the defendants will be estopped from asserting in a civil action any anticipation and obvious arguments based on patents or printed publications that were raised or reasonably could have been raised during the inter partes review proceeding. See 35 U.S.C. 311, 315(e)(2), 318(a). Moreover, a stay will allow the court and the parties to avoid wasting resources on a Markman process to address claims that may be amended or canceled. See Bear Creek, 2013 WL 3789471 at *3 n.8. And the court and the parties will have the benefit of the inter partes review record in any post-stay Markman process. See Gioel/o Enters. Ltd. v. Mattel, Inc., No. 99-375-GMS, 2001 WL 125340, at *l (D. Del. Jan. 29, 2001). 6 Although the parties conducted fact discovery in preparation for the ITC proceeding, fact discovery is not complete, and the court has not yet entered a scheduling order or set a trial date.