BiTMICRO LLC v. Intel Corporation
- Edward Davila
- 5:23-cv-00625
- U.S. District Court · Northern District of California
- 6
In BiTMICRO v. Intel, Judge Davila granted in part and denied in part Intel’s motion, ordering a partial stay while patent-review institution decisions were pending.
BiTMICRO and Intel were affected. The case was partially stayed until December 20, 2023; Intel had to permit BiTMICRO to review source code during the stay, while BiTMICRO could not conduct the additional requested discovery concerning obviousness and secondary considerations.
What happened
In BITMICRO LLC v. Intel Corporation, BiTMICRO accused Intel of infringing six patents involving memory and storage technology. Intel asked the court to pause the case while the Patent Trial and Appeal Board considered seven requests for inter partes review, a process for challenging patent claims.
The court granted in part and denied in part Intel’s motion. It ordered a partial stay until December 20, 2023, while the Board considered whether to begin review, but did not order a full stay. Intel was required to let BiTMICRO review source code during the stay, while BiTMICRO’s request to conduct additional discovery about whether the patents were obvious was denied.
Judge Davila concluded that the partial stay could simplify the case, conserve resources, and reduce potential prejudice to BiTMICRO. The parties also had to file a joint status report after the Board’s institution decision, and either party could seek to extend the stay.
The detailed version
- BiTMICRO LLC v. Intel Corporation · No. 5:23-cv-00625
- Edward Davila
- July 27, 2023
Background
BiTMICRO sued Intel for allegedly infringing six patents concerning memory controllers, mapping tables for memory devices, storage-device security, memory saving during power loss, microchip configuration, and system booting. The asserted products included various solid-state drives, memory products, integrated circuits, field-programmable gate arrays, and RAID-controller products.
The case was originally filed in the Western District of Texas and was later transferred to the Northern District of California. Before and after the transfer, the parties completed claim-construction briefing. Intel later filed seven petitions asking the Patent Trial and Appeal Board to conduct inter partes review of all six asserted patents. The Board had not yet decided whether to institute review when Intel moved to stay the district-court case.
Court’s analysis
The court considered three factors commonly used when deciding whether to stay a patent-infringement case pending patent review: the stage of the case, whether a stay would simplify the issues, and whether a stay would unfairly prejudice the opposing party.
The court found that the case was not sufficiently early to justify a full stay because the parties had completed claim-construction briefing and had been preparing for a claim-construction hearing. However, because the Board had not yet decided whether to institute review, the court found that a partial stay was appropriate at that time.
The court determined that a partial stay could simplify the case and conserve judicial resources. If the Board instituted review and Intel succeeded, some or all of the patent claims could be found invalid. The court also found that a partial stay would reduce the risk of inconsistent results.
BiTMICRO argued that a full stay could cause lost evidence, faded memories, and delay in obtaining Intel’s source code. The court concluded that a partial stay would address many of those concerns. It therefore imposed a condition requiring Intel to permit BiTMICRO to review the source code during the stay.
BiTMICRO also asked to conduct discovery concerning obviousness and secondary considerations of nonobviousness while responding to Intel’s review petitions. The court denied that request, stating that the Patent Trial and Appeal Board’s rules would control what could be produced and relied on in those proceedings and that the limited nature of Board discovery reduced the risk of duplicated efforts.
Disposition
The court granted in part and denied in part Intel’s motion to stay. It entered a partial stay until December 20, 2023, while the Board issued institution decisions. Intel was ordered to permit BiTMICRO to conduct source-code review during the stay. The parties were ordered to file a joint status report within one week of the Board’s decision regarding “Apple’s petitions for IPR,” as stated in the order. Either party could move to extend the stay after the Board’s decision.
Read the full 6-page opinion on CourtListener, the free public archive maintained by the Free Law Project.