FullView, Inc. v. Polycom, Inc.

• Court: District Court, N.D. California
• Decided: January 9, 2023
• Docket: 3:18-cv-00510
• Status: Unknown

Opinion

1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 7 FULLVIEW, INC., Case No. 18-cv-00510-EMC

8 Plaintiff, ORDER GRANTING DEFENDANT’S 9 v. MOTION TO STAY CASE PENDING APPEAL 10 POLYCOM, INC., Docket No. 216 11 Defendant.

12 13 14 Plaintiff FullView, Inc. (“FullView”) filed suit against Defendant Polycom, Inc. 15 (“Polycom”) for patent infringement of U.S. Patent No. 6,128,143 (“the ’413 patent”). The parties 16 filed cross-motions for summary judgment on infringement. The Court granted FullView’s 17 motion for summary judgment of infringement of the patent-at-suit on November 7, 2022. Docket 18 No. 213. Polycom then appealed to the Federal Circuit on November 17, 2022. Docket No. 215. 19 Now pending before this Court is Polycom’s motion to stay the case pending appeal. Docket No. 20 216. 21 Whether a stay is appropriate depends on three factors: “(1) the possible damage which 22 may result from the granting of a stay, (2) the hardship or inequity which a party may suffer in 23 being required to go forward, and (3) the orderly course of justice measured in terms of the 24 simplifying or complicating of issues, proof, and questions of law which could be expected to 25 result from a stay.” Lockyer v. Mirant Corp., 398 F.3d 1098, 1110 (9th Cir. 2005). Here, all 26 factors favor granting the motion for a stay. First, no damage would result from a stay because the 27 patent-at-issue is expired and thus there is no potential harm of continued infringement. The case 1 insolvency. Moreover, it does not assert that pre-judgment interest will not protect it from the lost 2 of the time-value of money. Second, there are no issues of inequity resulting from the stay. 3 FullView’s contention that “[o]ther potential witnesses are in their 70s and 80s” and at risk of 4 passing away and thus prejudice it pursuit of a money judgment is speculative and baseless. 5 Docket No. 224 at 3. Third, waiting for a decision from the Federal Circuit could simplify the 6 questions of law left for this Court to decide. 7 Under 28 U.S.C. § 1292(c)(2), a defendant in a patent case may immediately appeal any 8 judgment that is “final except for an accounting.” Thus, “an appeal in a patent case can come to 9 [the Federal Circuit] under § 1292(c)(2) after validity and infringement are determined but prior to 10 determining damages.” Majorette Toys (U.S.) Inc. v. Darda, Inc. U.S.A., 798 F.2d 1390, 1391 11 (Fed. Cir. 1986). The statute also confers upon the Federal Circuit jurisdiction “to entertain 12 appeals from patent infringement liability determinations when willfulness issues are outstanding 13 and remain undecided.” Robert Bosch, LLC v. Pylon Mfg. Corp., 719 F.3d 1305, 1319 (Fed. Cir. 14 2013). Polycom has appealed this case to the Federal Circuit. This Court has already decided the 15 substantive infringement issues, leaving the only remaining issues of willfulness and damages. 16 Courts have recognized that § 1292(c)(2) was enacted to avoid “the large expenses frequently 17 involved in such accountings and the losses incurred where recoveries were ultimately denied by 18 reversal of decrees on the merits.” McCullough v. Kammerer Corp., 331 U.S. 96, 98–99 (1947). 19 Only after the appellate decision would it be clear whether this Court’s determination on damages 20 would be unnecessary (if the Federal Circuit finds the patent invalid or not infringed) or whether 21 this Court would need to conduct a new trial on infringement or validity (if the Federal Circuit 22 finds a triable issue of fact) or whether the Court should proceed with a damages determination (if 23 the Federal Circuit affirms). 24 /// 25 /// 26 /// 27 /// 1 The Court thus GRANTS Polycom’s motion to stay the case pending appeal. However, 2 the parties are directed to meet and confer and explore further ADR during the pendency of the 3 appeal and the exchange of information (such as sales data) to facilitate that ADR notwithstanding 4 the stay. 5 This order disposes of Docket No. 216. 6 7 IT IS SO ORDERED. 8 9 Dated: January 9, 2023 10 11 ______________________________________ EDWARD M. CHEN 12 United States District Judge 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27