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Wherevertv, Inc. v. Comcast Cable Communications, LLC

United States District Court, M.D. Florida, Fort Myers Division

October 9, 2019

WHEREVERTV, INC., Plaintiff,
v.
COMCAST CABLE COMMUNICATIONS, LLC, Defendant.

          OPINION AND ORDER

          JOHB E. STEELE, JUDGE

         This matter comes before the Court on Comcast Cable Communications, LLC's Motion to Stay Pending Inter Partes Review (Doc. #90) filed on September 6, 2019. Plaintiff Wherevertv, Inc. filed a Response in Opposition (Doc. #97) on September 29, 2019, and Comcast replied (Doc. #102). For the reasons set forth below, the Motion is denied without prejudice.

         I.

         This is a patent infringement dispute concerning U.S. Patent No. 8, 656, 431 (“‘431 Patent”) held by plaintiff WhereverTV, Inc., entitled “Global Interactive Program Guide Application and Device.”[1] Plaintiff alleges that defendant Comcast's Xfinity X1 Platform has directly infringed and continues to directly infringe on the ‘431 Patent. (Doc. #30, Amended Complaint.)

         Plaintiff initiated this case on August 1, 2018 (Doc. #1) and on August 20, 2019, plaintiff filed two separate petitions for review by the U.S. Patent and Trade Office (USPTO) for inter partes review[2] of the ‘431 Patent. Comcast believes that these petitions demonstrate that the asserted claims of this patent-in-suit case are invalid and should be canceled or review will at least streamline the issues and simply this case. For these reasons (and others), Comcast moves to stay this case pending the USPTO's resolution of the petitions. Wherevertv opposes a stay, arguing that unless and until the USPTO institutes an inter partes review, it makes little sense to stay the litigation and doing so will result in undue prejudice to plaintiff.

         II.

         A. Standard

         “Courts have broad discretion to manage their dockets, including the power to grant a stay pending the conclusion of PTO administrative proceedings.” Automatic Mfg. Sys., Inc. v. Primera Tech., Inc., No. 6:12-cv-1727, 2013 WL 6133763, at *1 (M.D. Fla. Nov. 21, 2013) (citation omitted). The party moving for a stay bears the burden of demonstrating that such relief is warranted. See id. (citing Landis v. N. Am. Co., 229 U.S. 248, 254-55 (1936)).

         When a party moves to stay patent infringement litigation during the pendency of inter partes review, courts consider the following non-exhaustive factors: (1) whether a stay will simplify the issues in question for trial of the case; (2) whether discovery is complete and whether a trial date has been set; and (3) whether the stay would unduly prejudice or present a clear tactical disadvantage to the non-moving party. See id.; Andersons, Inc. v. Enviro Granulation, LLC, No. 8:13-cv-3004, 2014 WL 4059886, at *2 (M.D. Fla. Aug. 14, 2014) (citations omitted). “The court's inquiry is not limited to these three factors - the totality of the circumstances governs.” Automatic Mfg., 2013 WL 6133763, at *1.

         B. Inter Partes Review Background and Timing

          Inter partes review was created by Congress in the Leahy- Smith America Invents Act (AIA). See 35 U.S.C. §§ 311-319. An inter partes review begins by a non-patent owner petitioning the USPTO to review the patentability of a patent. See 35 U.S.C. § 311(b). The non-patent owner challenges one or more claims of a patent as invalided under 35 U.S.C. §§ 102 (prior art) and/or 103 (obviousness). The patent owner may file a response to argue against the USPTO instituting an inter partes review. See 37 C.F.R. § 42.107(a)-(b).

         An inter partes review is limited to only those claims challenged in the petition. If, based on the petition and the patent owner's preliminary response, the USPTO determines “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition, ” then it may initiate a review. 35 U.S.C. § 314(a). That decision must be made within three months of the patent owner's response, or three months from the last day the patent owner could respond to the petition. See 35 U.S.C. § 314(b).

         The scope of the review is indeterminate until the UPSTO's determination, however, because the regulations that implement the AIA further provide that the USPTO may choose to review “all or some of the grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). In fact, even if all the grounds in a petition are well-taken, the USPTO may authorize the review to proceed on only “some of the challenged claims” or on only “some of the grounds of unpatentability asserted for each claim.” Id. Indeed, the USPTO declines to conduct the review altogether if it cannot proceed with a review within the mandated timeframe. 77 Fed. Reg. 48, 689.

         On August 20, 2019, Comcast filed two petitions for inter partes review of each asserted claim of the '431 patent. Thus, by statute, the USPTO has at most six months - until about March 2020[3] - to determine whether one or both of Comcast's petitions establish a likelihood that the claims are invalid. If the USPTO agrees with Comcast, then it will institute inter partes review. Furthermore, the USPTO may decide whether to institute inter partes review earlier if plaintiff, as ...


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