“WHEREAS, Defendant LedUp Manufacturing Group, LTD. (“LedUp”) has filed an Unopposed Motion to Stay Pending Inter Partes Review; WHEREAS, Plaintiff Seasonal Specialties (“Plaintiff”) does not oppose this Case 2:23-cv-06318-KK-AS Document 46 Filed 10/17/24 Page 1 of 4 Page ID #:798 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 2 ORDER Motion; WHEREAS, LedUp has moved this court to stay this case pending inter partes review (“IPR) of U.S. Patents Nos. 11,096,252 and 11,533,794. Two of the four patents are in-suit; WHEREAS, the IPR procedure is designed to (1) reduce the time the United States Patent and Trademark Office (“USPTO”) spends reviewing validity; and (2) minimize duplicate efforts by coordinating the IPR process with litigation; WHEREAS, on August 2, 2024, LedUp filed two IPR petitions with the USPTO setting forth substantial bases to invalidate two of the four patents in-suit; WHEREAS, the Patent Trial and Appeal Board (“PTAB”) is scheduled to decide whether to consider the institution of the IPR within three months and a final decision to institute the IPR within the statutory timeline of the next six months; WHEREAS, LedUp has requested that, in the alternative of a stay pending inter partes review, this matter be stayed until the PTAB issues its decision on whether to institute the IPR, withing six months, at which time the Court would have a clear picture and determination of the IPR status; WHEREAS, this case is in its early stages. Each party has served first discovery requests with responses continuing, no depositions have taken place, no scheduling by the Court nor briefing has occurred for the procedural stages of a patent case – including a Markman hearing and the resultant claim construction; WHEREAS, risk exists that, in the event that any claim amendments or other circumstances occur affecting claim construction during the IPR, any construction and claim interpretation resulting from the Markman hearing would have to be redone. WHEREAS, experts have not yet been identified, there is a pretrial scheduled for June 5, 2025, and the majority and substantial litigation activities have yet to be undertaken; WHEREAS, a stay would (1) allow the Court to reap the benefits of the IPR Case 2:23-cv-06318-KK-AS Document 46 Filed 10/17/24 Page 2 of 4 Page ID #:799 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 3 ORDER proceedings as to claim interpretation and to gain the PTO’s evaluation of new prior art as it impacts validity; and (2) allow the parties to avoid unneeded preparation and discovery for any claims that are canceled in the IPR; WHEREAS, the IPR has the potential to greatly simplify the case given that all of the claims of the two IPR patents are being challenged. In that event those claims are canceled, they cannot be asserted in this action. See, Fresenius USA, Inc. v. Baxter Intern., Inc., 721 F.3d 1330 (Fed. Cir. 2013); WHEREAS, the stay of this proceeding pending the IPR determination would develop the intrinsic record for the challenged patents and simplify how the remaining claims are construed by the Court after the Markman hearing. See, Aylus Networks, Inc. v. Apple Inc., 856 F.3d 1353, 1363 (Fed. Cir. 2017) (holding that statements made during IPR may support a finding of prosecution disclaimer when construing claims); WHEREAS, if any claims are amended during the IPR proceedings, the amendments will eliminate past damages, and the focus of this litigation would shift from the present claims to the amended claims; and WHEREAS, the stay will not unduly prejudice the Plaintiff; the Plaintiff does not oppose this Motion and is not seeking preliminary injunctive relief. THEREFORE, and consistent with the objectives of Congress in providing the IPR mechanisms for challenging patent validity, the Court grants a stay of this litigation pending the IPR proceeding. Plaintiff shall file a joint status report no later than January 14, 2025, and every ninety days thereafter, unless otherwise ordered by the Court. Plaintiff is expressly warned that failure to comply with this Order may result in dismissal of this action without prejudice for failure to prosecute and comply with Court orders. Fed. R. Civ. P. 41(b). / / / / / / / / / Case 2:23-cv-06318-KK-AS Document 46 Filed 10/17/24 Page 3 of 4 Page ID #:800 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 4 ORDER IT IS FURTHER ORDERED that the Clerk of Court shall administratively close this action. (JS-6)”