CPC Patent Technologies Pty Ltd. v. Apple Inc.

Background

CPC Patent Technologies Pty Ltd. brought this patent-infringement action against Apple Inc., asserting U.S. Patent Nos. 9,665,705 and 8,620,039 against Apple’s Touch ID and Face ID functions. The ’705 Patent concerns enrollment in a biometric security system in which biometric data is securely stored and used to unlock a device. The ’039 Patent concerns smart-card security using biometric data.

Apple petitioned the Patent Trial and Appeal Board (PTAB) to conduct inter partes review (IPR) of both patents. The PTAB instituted review of the ’705 Patent on September 28, 2022, and of the ’039 Patent on October 17, 2022. The case had already been stayed while the PTAB considered whether to institute those reviews. Before that earlier stay, the case had been transferred from another district, the court had not issued a scheduling order, fact discovery was incomplete, expert discovery had not begun, and no trial date had been set.

Motion and analysis

Apple filed an unopposed motion asking the court to continue staying the action until the PTAB issued final written decisions in both IPR proceedings. The court applied three factors commonly used to decide whether to stay a patent case pending patent review: the status of discovery and trial scheduling, whether the stay would simplify the issues and avoid duplicated work, and whether the stay would unfairly prejudice or tactically disadvantage the party opposing the stay.

The court found that all three factors favored a stay. First, the case was already stayed and remained at an early stage. Second, the PTAB had instituted review of all asserted claims in both patents, so the PTAB’s decisions could invalidate some or all of CPC’s claims and simplify the district-court litigation. Third, CPC did not oppose the motion, and the court found no risk of an indefinite stay because the stay was expected to remain in place only until the PTAB issued final written decisions, anticipated between September and October 2023. The court noted that the parties could later revisit whether the stay should continue during any appeals.

Ruling

The court granted Apple’s motion to further stay the present action in its entirety pending final resolution of Apple’s IPRs concerning the two patents. The court also stated that all pending motions were terminated for administrative purposes only and could be renewed after the stay was lifted, without prejudice to renewal.