Viavi Solutions Inc. v. Platinum Optics Technology Inc.

Background

Viavi Solutions Inc. brought this patent-infringement case against Platinum Optics Technology Inc. Viavi alleges that Platinum manufactured and sold optical filters using designs covered by U.S. Patent Nos. 9,354,369, 9,588,269, and 10,222,526.

Platinum argued that a prior settlement between the parties released infringement liability and gave it a license covering certain worldwide sales of the accused “11246” filter before May 1, 2020. Platinum also argued that the accused products did not infringe and that the patents were invalid. Platinum had filed three petitions for inter partes review, a patent-review process before the Patent Trial and Appeal Board, challenging all but one of the asserted claims.

Motion to Stay

Platinum asked the court to stay, or pause, the case while the Patent Trial and Appeal Board decided whether to begin review of the petitions. Platinum also sought a stay pending the final resolution of those reviews if any part of the case remained after the court ruled on Platinum’s summary-judgment motion.

The court applied factors addressing the stage of the case, whether a stay could simplify the issues, and whether the stay would unfairly harm Viavi. The court found that fact discovery was in its early stages, expert discovery had not begun, and no trial date had been set. It also found that the patent reviews could eliminate issues, assist with the trial if claims survived, and help avoid inconsistent results.

The court considered that the parties were competitors but noted a serious question about whether they competed in the United States. The court also noted Platinum’s representation that it had not sold the 11246 filter anywhere in the world after May 1, 2020, and that Viavi’s infringement contentions identified only that filter. The court concluded that the possible delay from the reviews did not amount to undue prejudice.

Disposition

The court granted Platinum’s motion to stay. It took the tutorial and claims-construction hearing scheduled for June 10, 2021, off calendar. The parties must file a joint status report within seven days after the Patent and Trademark Office’s decision. The court also continued the hearing on Platinum’s summary-judgment motion to 9:00 a.m. on September 16, 2021. The opinion did not decide the summary-judgment motion or the patent-infringement issues.