Apple Inc. v. Alivecor, Inc.

Background

Apple filed a patent-infringement action against AliveCor on December 12, 2022. Apple alleged direct and indirect infringement of four patents related to electrocardiogram technology and related applications: U.S. Patent Nos. 10,076,257; 10,270,898; 10,866,619; and 10,568,533. The accused products were identified as AliveCor’s KardiaMobile Card, KardiaMobile, and KardiaMobile.

AliveCor filed petitions with the United States Patent and Trademark Office (USPTO) seeking inter partes review (IPR), an administrative process for challenging patentability. Its petitions challenged the ’619 Patent, the ’257 Patent, the ’898 Patent, and the ’533 Patent. AliveCor then moved to stay, or pause, the district-court case until the IPR proceedings were completed.

Legal standard

The court explained that it has discretion to stay litigation while patent reviews are pending. It considered three factors: the stage of the case, whether a stay would simplify the issues, and whether a stay would unfairly prejudice Apple or create a tactical disadvantage. AliveCor had the burden of showing that a stay was appropriate.

Court’s analysis

The court found that the case remained at a relatively early stage. Although claim construction had begun, discovery was far from complete, no depositions or expert discovery had occurred, and no trial date had been set. This factor favored a stay.

The court also found that the IPR proceedings could simplify the case by potentially eliminating some infringement claims, simplifying invalidity arguments, and providing the court with the USPTO’s analysis. The court declined Apple’s request to assess the likely merits of AliveCor’s petitions because the USPTO’s institution decisions were expected soon. This factor also favored a stay.

On prejudice, the court found no evidence that AliveCor had purposefully delayed filing its petitions or its motion. The court also noted that institution decisions were expected shortly and that the USPTO had already instituted an IPR concerning the ’257 Patent brought by Masimo Corporation. Although Apple argued that the parties’ broader set of disputes created a risk of unfair prejudice, the court found that Apple had not provided evidence showing that a temporary stay would cause unique or undue competitive harm.

Disposition

The court GRANTED AliveCor’s motion to stay pending an initial USPTO decision on whether to institute AliveCor’s IPR petitions. Within seven days after the USPTO issued its decisions concerning the ’619 and ’257 Patents, the parties were ordered to file a joint status report of no more than one page, without argument, and attach copies of the decisions. The stay would remain in place unless and until the court ordered otherwise; after reviewing the report, the court would decide whether to lift or continue it.