The opinion
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF OREGON
BESANG, INC., No. 3:23-cv-00113-HZ
Plaintiff, OPINION & ORDER
v.
INTEL CORPORATION,
Defendant.
Susan D. Pitchford
Chernoff Vilhauer LLP
111 SW Columbia St, Ste 725
Portland, OR 97201
Aisha Mahmood Haley
Bjorn A. Blomquist
Bradley Wayne Caldwell
James F. Smith
Jason Dodd Cassady
John Austin Curry
John Franklin Summers
Richard A. Cochrane
Robert Seth Reich, Jr.
Warren Joseph McCarty III
Xu Zhou
Caldwell Cassady Curry PC
2121 N Pearl St, Ste 1200
Dallas, TX 75201
Attorneys for Plaintiff
Chad S. Campbell
Tyler Reese Bowen
Elizabeth Baxter
Heather C. Martin
Perkins Coie LLP
2901 N Central Ave, Ste 2000
Phoenix, AZ 85012
Renee E. Rothauge
Sarah J. Crooks
Gregory J. Mina
Perkins Coie LLP
1120 NW Couch St, 10th Floor
Portland, OR 97209
Christina McCullough
Dorianne Salmon
Perkins Coie LLP
1201 Third Ave, Ste 4800
Seattle, WA 98101
Philip Alcide Morin
Perkins Coie LLP
11452 El Camino Real, Ste 300
San Diego, CA 92130
Attorneys for Defendant
HERNÁNDEZ, District Judge:
Defendant Intel Corporation moves to extend the temporary stay of deadlines in this
patent infringement case until the Patent Trial and Appeal Board (“PTAB”) decides whether to
institute inter partes review (“IPR”) of the patent alleged to be infringed. Def. Mot. to Stay, ECF
74. Plaintiff opposes the Motion. Pl. Resp., ECF 77. For the following reasons, the Court denies
the Motion.
BACKGROUND
On January 23, 2023, Plaintiff sued Defendant, alleging infringement of its patent No.
7,378,702 (“the ’702 Patent”), entitled “Vertical Memory Device Structures.” Compl. ¶ 9, ECF
1. On May 16, 2023, the Court held a Rule 16 conference and set case deadlines through claim
construction. ECF 45. On June 26, 2023, Plaintiff filed a Motion to Disqualify Perkins Coie from
representing Defendant. ECF 60. At the parties’ joint request, the Court temporarily stayed all
case deadlines pending the Court’s ruling on the Motion to Disqualify. ECF 65, 66. The Court
denied the Motion to Disqualify on August 25, 2023. ECF 67. Defendant now moves to extend
the temporary stay until on or about December 14, 2023, when the PTAB will decide whether to
institute review of the ’702 Patent based on the IPR petition Defendant filed. Def. Mot. to Stay 2;
Bowen Decl. ¶ 3, Ex. B, ECF 75.
STANDARDS
“A district court has discretionary power to stay proceedings in its own court[.]” Lockyer
v. Mirant Corp., 398 F.3d 1098, 1109 (9th Cir. 2005).
When deciding whether to stay a proceeding pending the IPR process, courts apply
a three-part test, asking whether: (1) discovery is complete and whether a trial date
has been set, (2) a stay will simplify the issues in question and trial of the case, and
(3) a stay would unduly prejudice or present a clear tactical disadvantage to the
non-moving party.
Garmin Switzerland GmbH v. FLIR Sys., Inc., No. 3:17-CV-01147-SB, 2017 WL 6453346, at *2
(D. Or. Dec. 18, 2017). See also Lyden v. Nike Inc., No. 3:13-CV-00662-HZ, 2013 WL 5729727,
at *7 (D. Or. Oct. 22, 2013). “The moving party has the burden to persuade the court that a stay
is appropriate.” Drink Tanks Corp. v. GrowlerWerks, Inc., No. 3:16-CV-410-SI, 2016 WL
3844209, at *2 (D. Or. July 15, 2016).
DISCUSSION
Defendant has not met its burden to show that the stay should be extended. With respect
to the first factor, while discovery is incomplete and no trial date has been set, the parties have
exchanged some written discovery, infringement and invalidity contentions, and some
documents. Def. Mot. to Stay 5; Pl. Resp. 11. Had the case proceeded on the timeline the Court
set at the Rule 16 conference, the parties would be in the midst of preparing for the claim
construction hearing, which was originally set to occur only one day after the PTAB’s institution
decision is expected. See ECF 45. Although the Court found that a stay of the case was
appropriate while reviewing the Motion to Disqualify, that motion has since been resolved, and
the case can now proceed. This factor does not favor extending the stay.
As to the second factor, the Court agrees with Plaintiff that it is premature to conclude
that a stay would simplify the issues. Pl. Resp. 7-11. Defendant seeks to extend the stay not to
await a decision from the PTAB on the validity of the ’702 Patent but to await a decision from
the PTAB on whether to review the validity of the ’702 Patent. See Def. Mot. to Stay 5-8. That is
not an adequate basis for further delay. This factor weighs against a stay.
Neither party makes a compelling case on the third factor, prejudice. Although Defendant
asserts that “Intel and BeSang are not direct competitors,” Def. Mot. to Stay 8, Plaintiff counters
that both parties “are in the semiconductor market,” Pl. Resp. 6. Defendant points out that
Plaintiff has not alleged any declining sales or market position due to the infringement. Def. Mot.
to Stay 8. Plaintiff responds that “[w]hile this lawsuit persists, BeSang has struggled (and will
continue to struggle) to secure investments and collaborate with memory manufacturers to bring
products to market.” Pl. Resp. 6. On this record, the third factor is neutral. In sum, Defendant has
not met its burden to show that the stay should be extended.
CONCLUSION
Defendant’s Motion to Extend Stay [74] is DENIED. The parties are to confer and file a
new proposed case schedule through claim construction within one week.
IT IS SO ORDERED.
DATED:________O__c_to_b_e_r_ _1_0_, _2_0_2_3_.
______________________________
MARCO A. HERNÁNDEZ
United States District Judge