International Business Machines Corporation v. Zillow Group Inc

Opinion

3 UNITED STATES DISTRICT COURT WESTERN DISTRICT OF WASHINGTON 4 AT SEATTLE 5 INTERNATIONAL BUSINESS 6 MACHINES CORPORATION, 7 Plaintiff, C20-851 TSZ 8 v.

9 ZILLOW GROUP, INC.; and ZILLOW, INC., 10 Defendants. 11 INTERNATIONAL BUSINESS

12 MACHINES CORPORATION, 13 Plaintiff, C20-1130 TSZ 14 v. ZILLOW GROUP, INC.; and 15 MINUTE ORDER ZILLOW, INC., 16 Defendants. 17 The following Minute Order is made by direction of the Court, the Honorable 18 Thomas S. Zilly, United States District Judge: 19 (1) Having reviewed the parties’ Joint Status Reports, docket nos. 173 and 181 in Case No. C20-851, and the records in both pending matters, the Court ORDERS as 20 follows: (a) The stay of Case No. C20-1130, which was imposed by Minute 21 Order entered December 23, 2020, is LIFTED, except that proceedings involving United States Patent No. 7,543,234 (“the ’234 Patent”) remain stayed pending a 22 1 decision by the United States Patent and Trademark Office’s Patent Trial and Appeal Board (“PTAB”) on the inter partes review (“IPR”) petition filed by 2 defendants Zillow Group, Inc. and Zillow, Inc. (collectively, “Zillow”) on July 23, 2021. The parties are DIRECTED to file a Joint Status Report within seven (7) 3 days after the PTAB issues a final decision in the IPR proceedings involving United States Patent Nos. 7,076,443 or 8,315,904, as to which related claims in 4 Case No. C20-851 are stayed, or a ruling concerning the IPR petition involving the ’234 Patent. The parties shall refrain from filing unilateral status reports, notices, 5 or supplemental materials regarding PTAB matters or actions in other districts1 involving one or more of the patents at issue in this litigation; if the parties cannot 6 agree on the status or relevance of rulings in other proceedings, they shall set forth their respective views in a single document submitted jointly. 7 (b) Plaintiff International Business Machines Corporation (“IBM”) is 8 DIRECTED to file, on or before October 29, 2021, infringement contentions as to all patents-in-suit in Case No. C20-1130 including the ’234 Patent. Zillow is 9 DIRECTED to file, on or before November 19, 2021, invalidity and non- infringement contentions as to all patents-in-suit in Case No. C20-1130 other than 10 the ’234 Patent. 11 (c) With respect to the patents-in-suit in Case No. C20-1130 other than the ’234 Patent, any motion pursuant to Federal Rule of Civil Procedure 12 12 challenging their validity (patentability) under Section 101 of the Patent Act, 35 U.S.C. § 101, and Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014), or its 13 progeny, shall be filed on or before December 16, 2021, and noted for January 28, 2021. Any response to such motion shall be filed on or before January 20, 2021, 14 and any reply shall be filed by the noting date. (2) The Court declines to set a trial date or related deadlines at this time. The 15 Court appreciates counsel’s efforts to propose a briefing schedule for claim construction and dispositive motion practice, but given the parties’ dispute concerning the sequence of 16

17 1 The Court is aware of the ongoing case in the Southern District of New York captioned Chewy, 18 Inc. v. Int’l Bus. Machs. Corp., Case No. 1:21-cv-1319-JSR. Zillow has filed three separate notices, docket nos. 174, 176, & 177 in Case No. C20-851, concerning scheduling and other non- 19 dispositive docket entries in the Chewy case, but none of them reflect the current date set for the claim construction hearing, i.e., October 8, 2021. See 6th Am. Revised Civil Case Mgmt. Plan 20 (S.D.N.Y. Case No. 1:21-cv-1319-JSR, docket no. 79). In the event that a claim construction order or a dispositive ruling is issued in the Chewy case, the parties shall file an appropriate Joint 21 Status Report; another district’s case management plans, which are subject to change, and other interim materials are not, however, of much benefit to the Court, and they clutter up the docket 22 unnecessarily. 1 infringement contentions in Case No. C20-1130 and discovery in Case No. C20-851, the Court concludes that a scheduling order should not be entered until after it rules on any 2 Rule 12 - § 101 motion in Case No. C20-1130. Zillow’s request, docket no. 181, to modify the Amended Stipulated Protective Order, docket no. 134 (as altered by Minute 3 Order, docket no. 133), is DENIED as moot. 4 (3) The Clerk is directed to send a copy of this Minute Order to all counsel of record. 5 Dated this 6th day of October, 2021. 6

7 Ravi Subramanian Clerk 8 s/Gail Glass 9 Deputy Clerk

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