Ebates Performance Marketing, Inc v. MyMail, Ltd.
- Lucy Koh
- 5:20-cv-04768
- U.S. District Court · Northern District of California
- 3
Ebates Performance Marketing v. MyMail: Judge Koh granted MyMail’s motion to stay the case pending resolution of its Federal Circuit appeal.
The plaintiffs and MyMail, Ltd.; the case was paused, its schedule was vacated, and its file was administratively closed while MyMail’s appeal was pending.
What happened
In Ebates Performance Marketing, Inc. v. MyMail, Ltd., the plaintiffs sought declarations that MyMail’s patents were not infringed, including patents involved in an earlier case. MyMail asked the court to pause this case while the Federal Circuit considered MyMail’s appeal from that earlier decision.
The court found that the appeal could affect this case because it involved the same party, two of the same patents, related continuation patents, many of the same claims, and overlapping patent-validity issues. The plaintiffs had also asked for judgment on the pleadings based on the earlier decision and argued that the patents were invalid.
Judge Lucy M. Koh granted MyMail’s motion to stay the case until the appeal was resolved by the Federal Circuit or the Supreme Court. The court vacated the case schedule and administratively closed the file, explaining that the closure did not affect the parties’ rights.
The detailed version
- Ebates Performance Marketing, Inc v. MyMail, Ltd. · No. 5:20-cv-04768
- Lucy Koh
- May 22, 2021
Background
The plaintiffs sued MyMail seeking declarations of non-infringement concerning U.S. Patent Nos. 10,228,838, 9,141,263, 9,021,070, and 8,275,863. MyMail had previously asserted the ’070 and ’863 patents in related cases against other parties. In those earlier cases, the court granted judgment on the pleadings and concluded that the ’070 and ’863 patents were invalid under 35 U.S.C. § 101. MyMail appealed that decision to the Federal Circuit, and the appeal remained unresolved.
The ’838 and ’263 patents were continuations of the ’070 and ’863 patents, and all four patents had the same specification. The plaintiffs acknowledged that 16 of the 32 claims MyMail asserted in this case had been invalidated in the earlier decision. The plaintiffs also stated that most limitations in the remaining claims were nearly identical to limitations in claims invalidated earlier.
Motion and Analysis
MyMail moved to stay, meaning pause, this case while its appeal was pending. The plaintiffs separately moved for judgment on the pleadings, arguing that MyMail was barred from asserting all four patents based on the earlier decision and that all four patents were invalid under § 101.
The court concluded that the Federal Circuit’s decision could clarify issues in the current case and promote judicial efficiency. If the court ruled that MyMail was barred from asserting the patents and the Federal Circuit later overturned the earlier decision, the court would have to reconsider that ruling. Similarly, if the court found the patents invalid and the Federal Circuit later held that two patents were valid, the court would have to reassess its rulings.
Ruling
The court granted MyMail’s motion and stayed the case until resolution of MyMail’s appeal in the earlier related cases by either the Federal Circuit or the Supreme Court. The parties were ordered to notify the court within three business days of the appellate ruling. The court vacated the case schedule and directed the Clerk to administratively close the file, expressly stating that the administrative closure did not affect the parties’ rights. Judge Lucy M. Koh did not decide the pending merits issues in this order.
Read the full 3-page opinion on CourtListener, the free public archive maintained by the Free Law Project.