MemoryWeb, LLC v. Apple, Inc.
- Vince Chhabria
- 3:21-cv-09839
- U.S. District Court · Northern District of California
- 3
MemoryWeb v. Apple: Judge Chhabria denied MemoryWeb’s motion to lift the stay because Federal Circuit appeals remain pending.
MemoryWeb, LLC and Apple, Inc.; the patent litigation remains paused while the Federal Circuit appeals are pending.
What happened
In MemoryWeb, LLC v. Apple, Inc., the court had paused the patent case while challenges to four asserted patents proceeded before the Patent Trial and Appeal Board. MemoryWeb asked the court to end the pause for two patents whose board proceedings were complete and said it would stop pursuing claims involving the other two patents.
The court declined because the board’s decisions on the first two patents were being appealed to the Federal Circuit. Waiting could prevent wasted discovery, motions, and trial preparation if the appeals changed those decisions. The court also found that MemoryWeb had shown only delay, not the kind of serious harm that justified ending the stay.
The court denied the motion to lift the stay. Judge Vince Chhabria did not decide whether any later dismissal of claims involving the other two patents would need to be with or without prejudice.
The detailed version
- MemoryWeb, LLC v. Apple, Inc. · No. 3:21-cv-09839
- Vince Chhabria
- Nov. 16, 2023
Background
The case was stayed, meaning the court paused further litigation, while the Patent Trial and Appeal Board (PTAB) considered challenges involving four asserted patents: the ’020, ’376, ’658, and ’228 Patents. The PTAB proceedings concerning the ’020 and ’376 Patents had reached final decisions, but those decisions were on appeal to the Federal Circuit. The PTAB proceedings concerning the ’658 and ’228 Patents were still awaiting final resolution.
Motion and Arguments
MemoryWeb moved to lift the stay. It argued that the PTAB proceedings for the ’020 and ’376 Patents were complete and that it would not continue pursuing claims based on the ’658 and ’228 Patents. MemoryWeb also argued that stays had been lifted in some cases involving similar circumstances.
Court’s Reasoning
The court held that the pending Federal Circuit appeals weighed against lifting the stay. The Federal Circuit could overturn part or all of the PTAB’s decisions. Continuing the stay could simplify the issues and avoid wasting resources on discovery, motion practice, trial preparation, and other litigation work that might become irrelevant or inadequate after the appeals were decided.
The court also found that MemoryWeb had not identified undue prejudice from continuing the stay. MemoryWeb had said only that it would have to wait longer to enforce its patent rights. The court stated that delay alone did not show undue prejudice and noted that there was no assertion that MemoryWeb competed with Apple in the product market.
Disposition
The court denied MemoryWeb’s motion to lift the stay because the Federal Circuit appeals remained pending. The court did not decide whether a future dismissal of claims involving the ’658 and ’228 Patents would need to be with prejudice or without prejudice. It stated only a tentative view that, absent an agreement by MemoryWeb to dismiss those claims with prejudice, the stay should remain until proceedings involving all four patents were completed. Judge Vince Chhabria signed the order.
Read the full 3-page opinion on CourtListener, the free public archive maintained by the Free Law Project.