1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 SOUTHERN DISTRICT OF CALIFORNIA 10 11 KOSS CORPORATION, Case No.: 21-CV-1177-CAB-JLB

12 Plaintiff,

ORDER VACATING HEARING AND

13 v. GRANTING MOTION TO STAY

14 PEAG, LLC d/b/a JLab Audio, [Doc. No. 30] 15 Defendant. 16 17 Defendant moves to stay this case pending resolution of inter partes review (“IPR”) 18 proceedings that have been instituted by third parties before the United States Patent and 19 Trademark Office (“PTO”). Upon consideration of the complete briefing on Defendant’s 20 motion, the Court finds the motion to be suitable for submission without oral argument. 21 The hearing set for October 7, 2021, is therefore VACATED. 22 In its motion, Defendant argues that a stay is warranted because: (1) this case is in 23 its early stages; (2) a stay is likely to simplify the issues before the Court; and (3) a stay 24 will not unduly prejudice Plaintiff. See generally TAS Energy, Inc. v. San Diego Gas & 25 Elec. Co., No. 12CV2777-GPC BGS, 2014 WL 794215, at *3 (S.D. Cal. Feb. 26, 2014) 26 (“District courts in the Ninth Circuit consider three factors in determining whether to order 27 a stay pending reexamination of a patent. . . : (1) whether discovery is complete and 28 whether a trial date has been set; (2) whether a stay will simplify the issues in question and 1 of the case; and (3) whether a stay would unduly prejudice or present a clear tactical 2 || disadvantage to the nonmoving party.’’) (internal quotation marks and citation omitted). 3 Plaintiff's primary argument in opposition is that a stay will not simplify the issues 4 || before the Court because Defendant will not be bound by any decisions in the pending IPR 5 || proceedings. Defendant, however, stipulates that if the Court stays the case, and the PTO 6 ||issues a Final Written Decision on any claim asserted by Plaintiff in this case, Defendant 7 || will not assert in this litigation or any other action that the claim is invalid on any ground 8 was raised or reasonably could have been raised during the IPR. [Doc. No. 39 at 6.] 9 ||In light of this representation, the Court agrees that a stay will potentially result in the 10 || simplification of the issues in this case. 11 Moreover, the Court is not persuaded by Plaintiff's claims of undue prejudice as a 12 || result of a stay, and there is no question that this case 1s in its early stages. Accordingly, it 13 |/is hereby ORDERED that Defendant’s motion to stay is GRANTED and this case is 14 || STAYED pending resolution of the IPR proceedings that have been instituted on the 15 || patents at issue in this case. Defendant is estopped from raising invalidity arguments that 16 || were made or could have been made in any IPR proceedings where a Final Written 17 || Decision is issued. The parties are ORDERED to provide a status update on the PTO 18 || decision to institute review of the final patent (U.S. Patent No. 10,206,025) promptly upon 19 || issuance by the PTO. Plaintiff may seek to lift the stay as to that patent if it is not instituted 20 review. The parties are further ORDERED to provide notice to the Court within five 21 || days of any Final Written Decision on the IPR of any of the claims asserted by Plaintiff in 22 || this case. 23 It is SO ORDERED. 24 || Dated: October 5, 2021 € Z 25 Hon. Cathy Ann Bencivengo 26 United States District Judge 27 28

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