Brice Environmental ServicesCorporation v. Arcadis U.S., Inc.

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF ALASKA
BRICE ENVIRONMENTAL
SERVICES CORPORATION, a
Subsidiary of Claisa Corporation,
Plaintiff,
vs.
ARCADIS U.S., INC.,
Defendant.
Case No. 3:21-cv-00141-JMK
ORDER GRANTING CONSENTED-
TO MOTION TO STAY AND JOINT
STIPULATION
Before the Court at Docket 42 is Defendant Arcadis U.S. Inc.’s Consented-
To Motion to Stay (the “Motion”). 	Also pending before the Court at Docket 43 is
Defendant 	and 	Plaintiff 	Brice 	Environmental 	Services 	Corporation’s 	(together, 	the
“Parties”) proposed Joint Stipulation Regarding Motion to Stay Pending Resolution of IPR.
For the foregoing reasons, the Court GRANTS Defendant’s Motion to Stay and the Parties’
Joint Stipulation.
I. 	BACKGROUND
Defendant seeks a stay of all proceedings in this patent infringement action
pending the resolution of its Petition for Inter Partes Review (the “Petition”) of U.S. Patent
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No. 7,399,141 (“the ’141 Patent”).1 Defendant filed the Petition with the Patent Trial and
Appeal Board (“PTAB”) on June 22, 2022, “requesting that all claims of the ’141 Patent
be cancelled on the grounds of obviousness.”2 The PTAB is expected to decide whether
to institute the inter partes review by December 22, 2022.3 	Defendant requests that the
Court stay this action pending the PTAB’s initial determination regarding whether to
institute inter partes review of the ’141 Patent and, if it does so, that the stay be maintained
until the final resolution of the inter partes review proceeding.4 Plaintiff consented to the
filing of Defendant’s Motion5 and the Parties also filed a proposed Joint Stipulation
implementing the stay, reserving the Parties’ rights, and providing that the Court shall have
continuing jurisdiction over this matter throughout the stay.6
II. 	DISCUSSION
“ Courts 	have 	the 	inherent 	power 	to 	manage 	their 	dockets 	and 	stay
proceedings, including the authority to order a stay pending conclusion of a PTO
reexamination.”7 	District courts within the Ninth Circuit consider three factors when
deciding a motion to stay pending inter partes review: “(1) whether discovery is complete
and whether a trial date has been set; (2) whether a stay will simplify the issues in question
and trial of the case; and (3) whether a stay would unduly prejudice or present a clear
1 Docket 42 at 1–2.
2 Id. at 5.
3 Id.
4 Id. at 10.
5 Id. at 2.
6 Docket 43.
7 KFx Med., LLC v. Stryker Corp., No. 18-cv-01799-H-WVG, 2019 WL 2008998, at *1 (S.D. Cal.
May 7, 2019) (quoting Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1426–27 (Fed. Cir. 1988)).
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Brice Environmental Services Corporation v. Arcadis U.S., Inc. 	Case No. 3:21-cv-00141-JMK
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tactical disadvantage to the nonmoving party.”8 These factors are not exhaustive. Rather,
the decision to grant a stay lies within the court’s discretion, “taking into account the
totality of the circumstances.”9
A. 	Stage of the Proceeding
To analyze this factor, courts often consider where “there is more work ahead
of the parties and the Court than behind the parties and the Court.”10 Defendant correctly
notes that “[t]his case is in its infancy.”11 	The Court issued a Scheduling and Planning
Order on June 6, 2022, which lists the many upcoming deadlines in this matter.12 	Only
three of the relevant deadlines have passed.13 The parties have “engaged in only minimal
discovery and no depositions have yet been taken.”14 The Court is not scheduled to hold a
Markman hearing until April 2023.15 A trial date has been set, but that date is two years
away.16 	Given the early stages of this proceeding, the Court does not have difficulty
concluding that the majority of the work in this case—and, in particular, the work that is
most costly for the Parties—lies ahead.17 This factor weighs in favor of a stay.
8 Universal Elecs., Inc. v. Universal Remote Control, Inc., 943 F. Supp. 2d 1028, 1030–31 (C.D.
Cal. 2013) (quoting Aten Int’l Co., Ltd. v. Emine Tech. Co., Ltd., No. SACV 09–0843 AG (MLGx), 2010
WL 1462110, at *6 (C.D. Cal. Apr. 12, 2010)).
9 KFx Med., LLC, 2019 WL 2008998, at *1.
10 Medtronic, Inc. v. Axonics Modulation Techs., Inc., No. SA CV 19-02115-DOC-JDE, 2020 WL
5087820, at *2 (C.D. Cal. May 8, 2020) (quoting Limestone v. Micron Tech., Nos. SA CV 15-0278-DOC
(RNBx) et al., 2016 WL 3598109, at *3 (C.D. Cal. Jan. 12, 2016)).
11 Docket 42 at 4.
12 Docket 37.
13 Id. at 10.
14 Docket 42 at 4.
15 Docket 37 at 11.
16 Id. at 12.
17 See Pragmatus AV, LLC v. Facebook, Inc., No. 11-CV-02168-EJD, 2011 WL 4802958, at *3
(N.D. Cal. Oct. 11, 2011) (When, as here, there has been no material progress in the litigation, courts in this
district strongly favor granting stays pending inter partes reexamination.”).
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B. 	Simplification of the Issues
“Waiting for the outcome of the [inter partes review] could eliminate the
need for trial if the claims are cancelled or, if the claims survive, facilitate trial by providing
the court with expert opinion of the PTO and clarifying the scope of the claims.”18 “This
is particularly true when a party has requested PTO review of each of the patents-in-suit
. . . .”19 Here, Defendant has filed for inter partes review of each claim in the only patent
at issue in this case.20 The high likelihood that the PTAB will initiate inter partes review,21
as well as the possibility that the inter partes review could eliminate some or all of the
issues in this case, weighs heavily in favor of granting the stay.22 Further, should the PTAB
decline to institute inter partes review, claim-construction discovery will undoubtedly be
compressed, but the parties nonetheless will have nearly four months to prepare for the
Markman hearing, and another ten months until the close of fact discovery.23 	Although
some courts refuse to stay litigation before the PTAB has decided to institute review, it “is
not uncommon for courts to grant stays pending reexamination prior to the PTO deciding
to reexamine the patent.”24 Denying a stay here would require the parties and the Court to
expend significant resources on issues that could be wholly mooted by the PTAB’s ultimate
18 Universal Elecs., Inc. v. Universal Remote Control, Inc., 943 F. Supp. 2d 1028, 1032 (C.D.
Cal. 2013) (quoting Target Therapeutics, Inc. v. SciMed Life Sys., Inc., No. C–94–20775 RPA (EAI),
1995 WL 20470, at *2 (N.D. Cal. Jan. 13, 1995)).
19 Id.
20 See Docket 42 at 5.
21 See id.
22 See Pragmatus AV, LLC, 2011 WL 4802958, at *3.
23 Docket 37 at 11–12.
24 Oyster Optics, LLC v. Ciena Corp., No. 17-CV-05920-JSW, 2018 WL 6972999, at *2 (N.D.
Cal. Jan. 29, 2018) (quoting Evolutionary Intelligence, LLC v. Facebook, Inc., No. 13-cv-04202-SI, 2014
WL 261837, at *3 (N.D. Cal. Jan. 23, 2014)).
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decision.25 If the PTAB denies the Petition, or if another aspect of this litigation materially
changes, either party may move this Court to lift the stay.26 	Accordingly, under the
circumstances of this case, the second factor supports a stay.
C. 	Undue Prejudice
The fact that Plaintiff consented to Defendant’s Motion strongly suggests
that it will not be unduly prejudiced or disadvantaged by a stay.27 Further, Plaintiff did not
move for a preliminary injunction in this case, suggesting that it will not be irreparably
harmed by the delay and that any harm it does incur is compensable with monetary
damages.28 	Finally, there is no evidence of a dilatory motive on the part of Defendant.
Defendant filed its Petition a year after the Complaint in this action was filed and just two
months after the Court’s Order denying Defendant’s Motion to Dismiss.29 	It was
reasonable for Defendant to wait to file for inter partes review until after it learned whether
this case would survive its Motion to Dismiss. The Court finds this factor favors a stay.
III. 	CONCLUSION
After consideration of the above factors and under the totality of the
circumstances, the Court finds that granting a stay is appropriate in this action. Given the
early stages of this proceeding and the absence of prejudice, the Court concludes that this
is a case where granting a stay before the PTAB’s initial decision regarding whether to
institute inter partes review is warranted. 	The Court therefore GRANTS Defendant’s
25 Finjan, Inc. v. Symantec Corp., 139 F. Supp. 3d 1032, 1037 (N.D. Cal. 2015).
26 See id.
27 See Docket 42 at 5.
28 See VirtualAgility Inc. v. Salesforce.com, Inc., 759 F.3d 1307, 1318–20 (Fed. Cir. 2014).
29 See Docket 1; Docket 25.
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Consented-To Motion to Stay. 	The present action is STAYED pending the PTAB’s
review. The Parties’ Joint Stipulation at Docket 43 also is GRANTED. The Court orders
the parties to file a Joint Status Report within seven (7) days of the PTAB’s initial decision
regarding whether to institute Defendant’s Petition.
IT IS SO ORDERED this 27th day of July, 2022, at Anchorage, Alaska.
/s/ Joshua M. Kindred
JOSHUA M. KINDRED
United States District Judge
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