Corephotonics, Ltd. v. Apple, Inc.
- James Donato
- 3:17-cv-06457
- U.S. District Court · Northern District of California
- 4
In Corephotonics v. Apple, Judge Koh denied Corephotonics’ motion to lift a patent-case stay because related proceedings risked inconsistent results.
Corephotonics, Ltd. and Apple, Inc.; the patent-infringement litigation remains stayed.
What happened
Corephotonics, Ltd. sued Apple, Inc. for patent infringement, and the court had stayed the case while related patent challenges proceeded before the Patent Trial and Appeal Board and the Federal Circuit.
Corephotonics asked the court to lift the stay, arguing that doing so would improve efficiency, protect its ability to monetize its patents, and fit the stage of the case. Apple opposed the request.
Judge Lucy H. Koh denied the motion. She ruled that continuing the stay would reduce the risk of inconsistent results, and the stay would remain until the court ordered otherwise.
The detailed version
- Corephotonics, Ltd. v. Apple, Inc. · No. 3:17-cv-06457
- James Donato
- June 1, 2020
Background
Corephotonics sued Apple in November 2017 for infringement of four patents. Corephotonics later filed related patent-infringement actions against Apple in 2018 and 2019. The court consolidated the 2018 action with the 2017 action and related the 2019 action to it.
The court stayed the 2017 action in December 2018 after the Patent Trial and Appeal Board began inter partes review proceedings concerning Corephotonics’ asserted claims. The court also stayed the 2019 action. On May 7, 2020, the court continued the stays in all three actions because proceeding could risk inconsistent results with the Patent Trial and Appeal Board and Federal Circuit proceedings, particularly because the actions involved overlapping products and significant common discovery.
Motion to Lift the Stay
Corephotonics moved to lift the stay in the 2017 action. It argued that lifting the stay would increase judicial efficiency, that the stay had severely hindered its ability to further monetize its patents, and that the stage of the litigation favored moving forward.
The court applied the same standard used to decide whether to impose a stay. It explained that staying proceedings is within the court’s discretion and that courts generally favor stays while Patent and Trademark Office reexamination or related proceedings are pending.
The court rejected Corephotonics’ efficiency argument. It noted that one patent at issue in the 2017 action—the ’712 patent—was still involved in an appeal before the Federal Circuit. Proceeding with the action therefore risked inconsistent results with that appeal. The court also rejected the argument concerning patent monetization, citing decisions stating that monetary damages generally provide an adequate remedy for infringement-related prejudice to a patent licensor.
Finally, the court concluded that the litigation’s current stage did not favor lifting the stay. Discovery remained outstanding, the parties had not filed dispositive motions or begun expert discovery, and the court had not held a claim-construction hearing.
Ruling
Judge Lucy H. Koh denied Corephotonics’ motion to lift the stay. The court ordered that the stay remain in effect until further order of the court.
Read the full 4-page opinion on CourtListener, the free public archive maintained by the Free Law Project.