Samsung Electronics Co, Ltd. v. Blaze Mobile, Inc.

Background

Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. sued Blaze Mobile, Inc. and Michelle Fisher. Samsung sought a declaratory judgment that it did not infringe eight identified patents. Blaze filed counterclaims alleging that Samsung infringed those patents.

The court had previously granted Samsung’s motion for judgment on the pleadings in part, ruling that the patents concerning near-field communication security improvements were ineligible for patent protection under 35 U.S.C. § 101. The court denied that motion in part as to patents concerning non-browser mobile-application security and performance improvements. Blaze later filed an amended counterclaim, and Samsung filed a motion to dismiss portions of that amended counterclaim. That motion was fully briefed but had not yet been decided.

Samsung then moved to stay the case while the Patent Trial and Appeal Board (PTAB) conducted ex parte reviews of the patents. The court had previously denied a stay based on Samsung’s earlier inter partes review requests, finding that merely filing those requests did not necessarily simplify the case. For the new request, however, the PTAB had granted review of all eight patents, and the United States Patent and Trademark Office had issued non-final rejections for three of them.

Court’s Analysis

Courts consider three factors when deciding whether to pause a patent-infringement case during patent-office review: the stage of the litigation, whether the review may simplify the case, and whether the pause would unfairly harm the opposing party.

The court found that the first factor favored a stay because discovery had not begun, the case remained at the pleading stage, and no trial date or case schedule had been set.

The second factor also favored a stay. Because all eight patents were under review, the reexaminations could eliminate or narrow some infringement and non-infringement issues. The reexaminations could also help the court evaluate patent validity if the claims continued in the case.

The third factor favored a stay as well. The court found that Samsung requested the reexaminations and the stay within reasonable timeframes. Although the court recognized Blaze’s frustration with the delay, it did not consider the PTAB’s processing time unreasonable. The court also noted that the parties were not direct competitors and that Blaze was not seeking an injunction, meaning potential harm could be addressed through damages. Blaze argued that the stay would cause prejudice and give Samsung a tactical advantage, but the court found that Blaze had not made a specific showing of prejudice beyond the delay inherent in any stay.

Disposition

The court granted Samsung’s motion to stay. While the case is stayed, the court terminated Samsung’s pending motion to dismiss and directed the parties to re-notice the court when the stay is lifted.