Viavi Solutions Inc. v. Platinum Optics Technology Inc.

Background

Viavi Solutions Inc. sued Platinum Optics Technology Inc. for allegedly manufacturing and selling optical filters that infringe U.S. Patent Nos. 9,354,369, 9,588,269, and 10,222,526. The court previously stayed, or paused, the case while the Patent Trial and Appeal Board considered inter partes review petitions filed by Platinum Optics challenging nearly all of the asserted claims.

Viavi moved to lift the stay after the Board denied institution of review for the ’269 and ’526 patents. After Viavi filed its motion, the Board instituted review of the ’369 patent. Platinum Optics’s requests for rehearing concerning the denied petitions for the ’269 and ’526 patents remained pending.

Legal standard

The court explained that federal courts have authority to manage their dockets, including by staying patent litigation during related patent-office proceedings. Courts generally consider whether discovery is complete and a trial date has been set, whether the stay will simplify the case, and whether the stay will unfairly prejudice the party seeking to lift it. A court may end a stay when the circumstances supporting it have changed significantly.

Discussion

The court concluded that the circumstances had not changed enough to justify lifting the stay. The case remained in its early stages, and no trial date had been set. The court also found that the relatedness of the claims in the three patents, including that the ’269 and ’526 patents are continuations of the ’369 patent, meant that the Board’s decision on the ’369 patent could affect claim construction—the interpretation of patent claims—for the other patents or could have a preclusive effect. Therefore, Viavi’s proposal to dismiss its claims concerning the ’369 patent would not necessarily simplify the case.

The court rejected Viavi’s argument that the stay caused undue prejudice because the parties were competitors. Viavi had located a mobile phone in the United States containing what it believed was a filter made by Platinum Optics, but Viavi acknowledged that the filter did not identify its manufacturer. Viavi also relied on the fact that Platinum Optics was one other manufacturer known to be qualified to supply the relevant filters, which the court found was not conclusive evidence that Platinum Optics made the filter. The court likewise found Viavi’s claimed market-share loss speculative because Viavi cited a prediction rather than evidence of actual loss and acknowledged that other competitors existed.

Disposition

The court DENIED Viavi’s motion to lift the stay. It stated that the institution of inter partes review on the ’369 patent supported maintaining the stay. The court also VACATED the January 27, 2022 hearing on the motion and the October 21, 2021 case-management conference.