1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 7 XR COMMUNICATIONS LLC, Case No. 3:22-cv-04784-WHO

8 Plaintiff,

ORDER GRANTING MOTION TO

9 v. STAY PENDING INTER PARTES

REVIEW

10 GOOGLE LLC, Re: Dkt. No. 68 Defendant. 11

12 Defendant Google LLC moves to stay this action until the completion of three inter partes 13 review (“IPR”) proceedings concerning both the asserted patents-in-suit. Under Civil Local Rule 14 7-1(b), I find this matter appropriate for resolution without oral argument and VACATE the 15 hearing on December 7, 2022. 16 As I previously informed the parties, I generally prefer to stay patent cases where the 17 Patent Trial and Appeal Board (“PTAB”) has instituted IPR on the patents-in-suit. See Order 18 Granting Motion to Stay Pending Inter Partes Review, Synopsys, Inc. v. Siemens Indus. Software, 19 Inc., No. 20-CV-04151-WHO, Dkt. No. 176 (June 7, 2022) (finding no special circumstances to 20 justify a stay pending IPR). Plaintiff XR Communications LLC maintained, however, that there 21 were special circumstances in this case that did not justify a stay. After reading and considering 22 the briefing, I disagree. 23 Courts in this District consider three factors in deciding whether a civil action should be 24 stayed pending IPR proceedings: “(1) whether discovery is complete and whether a trial date has 25 been set; (2) whether a stay would simplify the issues in question and trial of the case; and 26 (3) whether a stay would unduly prejudice or present a clear tactical disadvantage to the non- 27 moving party.” PersonalWeb Techs., LLC v. Apple Inc., 69 F. Supp. 3d 1022, 1025 (N.D. Cal. 1 a stay,’ but ‘ultimately the Court must decide stay requests on a case-by-case basis.’” Palo Alto 2 Networks, Inc. v. Packet Intel. LLC, No. 19-cv-02471-WHO, 2020 WL 5760475, at *1 (N.D. Cal. 3 Sept. 28, 2020) (citation omitted). 4 Here, discovery is not nearly complete, a trial date has not been set, and this case is at any 5 early enough stage to warrant a stay. See PersonalWeb Techs., 69 F. Supp. at 1025. Additionally, 6 || there is little doubt that a ruling from the PTAB will simplify the issues here, given that the PTAB 7 is reviewing both patents-in-suit and most asserted claims, so will likely to clarify or simplify 8 || many of the underlying issues in the case. See id. Also, XR Communications will not be unduly 9 || prejudiced by a stay because it is not at all clear the stay will confer upon Google an unfair 10 advantage or that Google unreasonably delayed its petitions for IPRs. And, the PTAB has 11 instituted review of the patents, which weighs in favor of granting a stay. See Google LLC v. 12 || EcoFactor, Inc., No. 21-CV-03220-HSG, 2022 WL 6837715, at *4 (N.D. Cal. Oct. 11, 2022). 5 13 As a result, and in keeping with the general practice of courts in this District, □□□□□ 14 Google’s motion to stay pending the resolution of the IPR proceedings.! 3 15 IT IS SO ORDERED. a 16 Dated: December 4, 2022 . 18 Iam H. Orrick 19 United States District Judge 20 21 22 23 24 25 26 27 28 ' Google’s Administrative Motion to Consider Whether Another Party’s Material Should Be Sealed, Dkt. No. 67, is GRANTED.