Scramoge Technology Limited v. Apple Inc.

Background

Scramoge Technology Limited sued Apple Inc. for infringing patents. Apple moved to stay, or pause, the district-court case while inter partes review proceedings and anticipated appeals were pending. Inter partes review is a Patent Trial and Appeal Board procedure for reconsidering whether patent claims are patentable.

When Apple filed its motion, it sought a stay covering all asserted claims of each asserted patent. Before the court ruled, the Board issued final written decisions for every asserted patent. The Board found all asserted claims of the ’962, ’215, and ’842 patents unpatentable. It found the ’740 patent and claim 13 of the ’565 patent not unpatentable. The court therefore stated that only the ’740 patent and claim 13 of the ’565 patent were currently actionable.

Scramoge asked to proceed on those surviving claims and requested that the invalidated patents either be separated into another action while appeals proceeded or dismissed without prejudice. The opinion does not state that the court granted either of those requests.

Court’s Analysis

The court considered the usual three factors for deciding whether to stay a patent case: the stage of discovery and whether a trial date had been set; whether a stay would simplify the issues; and whether a stay would unfairly harm or disadvantage the party opposing the stay.

The court stated that the first factor did not weigh against a stay because discovery was incomplete, no depositions were scheduled, expert discovery had not begun, no dispositive orders had issued, and no trial date had been set.

The second factor weighed heavily against a stay. Because the Board had already issued final written decisions, the court concluded that the potential for further simplification from an appeal had greatly diminished. Apple did not show that a stay during the appeals would further simplify the issues.

The third factor also weighed heavily against a stay. The court found that a continued stay had no clearly defined endpoint, could require the parties to wait about a year or longer for the Federal Circuit’s disposition, and would create prejudice through an indefinite delay. The court also found a low likelihood that the appeals would change the scope of the case.

Ruling and Next Steps

Judge Jacqueline Scott Corley denied Apple’s motion to stay. Discovery and claim construction will proceed as to the ’740 patent and claim 13 of the ’565 patent. The court stated that it was inclined not to schedule trial until the appeals of the Board’s decisions, while setting a claim-construction hearing for March 27, 2024, and deadlines for infringement contentions, invalidity contentions, proposed claim terms, claim-construction briefs, and related submissions.

The order disposes of Docket No. 179.