Largan Precision Co, LTD v. Motorola Mobility, LLC.
- Jeffrey White
- 4:21-cv-09138
- U.S. District Court · Northern District of California
- 6
In Largan Precision v. Motorola, Judge White lifted the stay, dismissed withdrawn patent claims without prejudice, and scheduled a case-management conference.
Largan Precision and Motorola Mobility; the case proceeds on claims 16–20 and 22–24 of the ’767 patent and claim 5 of the ’948 patent, while the other infringement claims were dismissed without prejudice.
What happened
Largan Precision sued Motorola Mobility over six patents and later asked the court to lift a pause in the case after patent-review proceedings resolved some claims. Largan proposed continuing with nine claims from two patents and withdrawing the others.
The court granted Largan’s motion, lifted the stay, and dismissed the withdrawn claims without prejudice. It ruled that Largan did not need Motorola’s consent to narrow the case, and that continuing the stay would no longer simplify the issues or would unnecessarily delay the case. The court also scheduled a case-management conference and required a joint statement beforehand.
Judge Jeffrey S. White issued the order on May 16, 2023.
The detailed version
- Largan Precision Co, LTD v. Motorola Mobility, LLC. · No. 4:21-cv-09138
- Jeffrey White
- May 16, 2023
Background
Largan sued Motorola for allegedly infringing six U.S. patents: Patent Nos. 8,310,767; 8,514,499; 9,696,519; 9,784,948; 10,209,487; and 10,564,397. Motorola later asked the court to pause the case while the Patent Trial and Appeal Board considered inter partes review petitions concerning the asserted patents. The court granted that request and stayed the case.
After the parties reported on the status of the patent reviews, Largan moved to lift the stay. Largan stated that claims 16–20 and 22–24 of the ’767 patent had survived review and could not be appealed, and that Motorola had not challenged claim 5 of the ’948 patent. Largan said it would narrow the case to those nine claims and withdraw the other asserted claims.
Analysis
The court applied the factors used to decide whether a stay pending patent review should remain in place: the stage of the litigation, whether the stay would simplify the issues, and whether continuing the stay would unfairly prejudice the party opposing it.
The court first ruled that Largan could narrow the claims without Motorola’s consent. Because Motorola had not filed a counterclaim, the court concluded that Largan could decide which infringement claims it would continue to litigate. The court also concluded that the withdrawn claims should be dismissed without prejudice. It noted that the case was still at an early stage, discovery had been limited, and no claim-construction hearing had occurred. The court dismissed the infringement claims other than claims 16–20 and 22–24 of the ’767 patent and claim 5 of the ’948 patent without prejudice.
The court then found that the stay no longer simplified the case because the review proceedings concerning the remaining claims had been resolved and no longer created the concerns that originally supported the stay. The early stage of the litigation also no longer supported continuing the stay, because the remaining claims were ready to proceed. Finally, the court found that continuing the stay would unnecessarily delay the case and prejudice Largan.
Disposition
The court granted Largan’s motion and lifted the stay. It ordered the parties to appear for a case-management conference on August 18, 2023, at 11:00 a.m., and to file a joint case-management-conference statement by August 11, 2023. The court did not decide whether Motorola infringed the remaining patent claims or whether those claims were valid.
Judge Jeffrey S. White issued the order on May 16, 2023.
Read the full 6-page opinion on CourtListener, the free public archive maintained by the Free Law Project.