DoDots Licensing Solutions LLC v. Samsung Electronics Co., Ltd.

Background

DoDots Licensing Solutions LLC sued Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Apple Inc. for infringement of three patents involving access to and display of internet content: U.S. Patent Nos. 9,369,545, 8,020,083, and 8,510,407. The patents had expired before this order. The cases were transferred to the Northern District of California in December 2023 after the Federal Circuit directed the transfer.

The Patent Trial and Appeal Board instituted inter partes review, an administrative process for reviewing patent validity, on all claims of each asserted patent in Samsung’s proceedings. The Board was expected to issue final determinations by October 23, 2024. The Board had denied Apple’s petitions for review, but Apple’s requests for Director Review were pending, and Apple had conditionally sought to join Samsung’s proceedings if its requests were denied.

Defendants moved to stay both cases until the Board determined the validity of the asserted patents.

The Court’s Analysis

The court considered three factors: the stage of the litigation, whether a stay would simplify the issues, and whether a stay would unfairly prejudice DoDots or give defendants a tactical advantage.

The stage-of-case factor favored a stay. Although the parties had conducted seven months of fact discovery, discovery was far from complete. No scheduling order or trial date had been set in the Northern District of California; expert discovery and dispositive-motion practice had not begun; and Samsung had not answered the complaint. The court also concluded that substantial work remained even though the Western District of Texas had issued claim-construction rulings.

The simplification factor also favored a stay. The Board’s review could cancel or modify patent claims, narrowing the case or eliminating the need to decide infringement. Even if the claims survived, Samsung would be subject to statutory limits on the prior-art arguments it could later raise in district court. The court also found that the pending proceedings involving Apple could provide useful information for later claim-construction issues, whether or not Apple joined Samsung’s reviews.

The prejudice factor favored a stay because DoDots conceded that it would not be prejudiced. The court noted DoDots’s position that, as a non-practicing entity, monetary damages would provide adequate redress.

Ruling

Judge Jacquelyn Corley held that defendants met their burden to show that a stay was warranted and consistent with the Federal Rules of Civil Procedure. The court GRANTED defendants’ motions to stay pending inter partes review. The order disposed of Docket No. 126 in Case No. 23-cv-06521-JSC and Docket No. 156 in Case No. 24-cv-00217-JSC.

The court scheduled a further case-management conference for November 14, 2024, required an updated joint statement before that conference, and ordered defendants to file a status report within five business days after the Board issued final written determinations on any of Samsung’s three petitions. The parties could request an earlier status conference if circumstances warranted.