NantWorks, LLC v. Niantic, Inc.
- Laurel Beeler
- 3:20-cv-06262
- U.S. District Court · Northern District of California
- 3
In NantWorks v. Niantic, Judge Beeler stayed the patent case pending Patent and Trademark Office review of all asserted claims.
NantWorks, LLC and Niantic, Inc.; the patent-infringement case is paused while the Patent and Trademark Office resolves Niantic’s review petitions.
What happened
NantWorks, LLC sued Niantic, Inc., alleging that Niantic’s Pokémon Go and Harry Potter: Wizards Unite apps infringed NantWorks’ patents. Niantic asked the court to pause the lawsuit while the Patent and Trademark Office reviewed the patents.
The court found that the case was still at an early stage: no depositions had occurred, and only NantWorks had submitted a claim-construction brief. Because Niantic’s review petitions challenged every asserted patent claim, the court also found that the review could simplify the lawsuit. The court rejected NantWorks’ arguments that a pause would cause undue harm.
The court granted Niantic’s motion and stayed the case until the Patent and Trademark Office resolves the review petitions. The parties must file a joint case-management statement within 14 days after those decisions. Judge Laurel Beeler issued the order.
The detailed version
- NantWorks, LLC v. Niantic, Inc. · No. 3:20-cv-06262
- Laurel Beeler
- July 15, 2021
Background
NantWorks develops technologies involving healthcare, commerce, and digital entertainment. It sued Niantic for allegedly infringing NantWorks’ patents through Niantic’s augmented-reality game applications Pokémon Go and Harry Potter: Wizards Unite. Niantic filed petitions for inter partes review (IPR), a Patent and Trademark Office process for reviewing patent claims, challenging all asserted claims. Niantic then moved to stay, or pause, the district-court case while the Patent and Trademark Office considered the petitions.
Analysis
The court applied three factors commonly used to decide whether to stay a patent case pending Patent and Trademark Office review: the stage of the litigation, whether the review would simplify the issues, and whether the stay would unfairly harm the party opposing it.
The first factor favored a stay because the case was in its early stages. Although claim construction had been scheduled, only NantWorks had submitted its brief, and no depositions had been taken. The court also noted that it had earlier invalidated one patent under 35 U.S.C. § 101 because the patent did not recite a patent-eligible invention.
The second factor favored a stay because the IPR petitions challenged every claim at issue in the lawsuit. The court reasoned that the Patent and Trademark Office’s review could simplify the issues, even though it was not yet certain whether the reviews would be instituted.
The third factor also favored a stay. Niantic filed the petitions within the statutory one-year limit and requested the stay shortly afterward. The court found that NantWorks’ concerns about disappearing evidence and fading witness memories were insufficient to show undue prejudice. It also found that NantWorks’ concerns about reputational harm, inability to license its patents, and possible employee departures did not establish undue harm. The court noted that the parties were not direct competitors and that damages could compensate NantWorks for any harm.
Ruling
The court granted Niantic’s motion to stay the case pending the Patent and Trademark Office’s resolution of the IPR petitions. Within 14 days after the Patent and Trademark Office issues its decisions, the parties must file a joint case-management statement proposing their next steps. Judge Laurel Beeler signed the order.
Read the full 3-page opinion on CourtListener, the free public archive maintained by the Free Law Project.