IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE

JOAO CONTROL & MONITORING SYSTEMS, LLC,

Plaintiffs,

v.

VOLKSWAGEN GROUP OF AMERICA, INC. and BENTLEY MOTORS, INC.,

Defendants.

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ORDER

Civil Action No. 14-517-GMS CONSOLIDATED

JURY TRIAL DEMANDED

Presently before the court in the above captioned matter is defendants' Motion to Stay

Litigation Pending the Outcome of Inter Partes Review of the Patents-in-Suit.1 (D.I. 50.) A

decision to stay litigation lies within the sound discretion of the court. See Cost Bros., Inc. v.

Travelers Indeni. Co., 760 F.2d 58, 60 (3d Cir. 1985); Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1426-

27 (Fed. Cir. 1988) (citations omitted) ("Courts have inherent power to manage their dockets and

stay proceedings, including the authority to order a stay pending conclusion of a PTO

reexamination."). The court performs a balancing analysis using the following three factors to

determine if a stay is appropriate: "(1) whether a stay would unduly prejudice or present a clear

tactical disadvantage to the non-moving party; (2) whether a stay will simplify the issues in

question and trial of the case; and (3) whether discovery is complete and whether a trial date has

1 On April 23, 2014 the plaintiff brought the above-captioned action against the defendants alleging infringement of U.S. Patent Nos. 5,917,405, 6,542,076, 6,548,130 and 7,397,363. (D.I. 1.)

been set." First Am. Title Ins. Co. v. McLaren LLC, No. 10-363-GMS, 2012 WL 769601, at *4

(D. Del. Mar. 9, 2012) (quoting Xerox Corp. v. 3Com Corp., 69 F. Supp. 2d 404, 406 (W.D.N.Y.

1999)).

After considering the parties' positions as set forth in their papers, as well as the applicable

law, the court finds that a stay is warranted here. The plaintiff is unlikely to suffer undue prejudice

as a result of the stay.2 Further, the issues before the court will be simplified by the ongoing inter

partes review proceedings of all currently asserted claims. 3 Although a trial date has been set, the

fact that this case remains in an early stage4 reinforces the prospect that a stay pending review will

advance the interests of judicial economy. Accordingly, the court grants defendants' motion.

IT IS HEREBY ORDERED THAT:

1. The defendants' Motion to Stay Litigation Pending the Outcome of Inter Partes

Review of the Patents-in-Suit (D.I. 50) is GRANTED; and

2. This matter is STAYED pending resolution of the inter partes review of U.S. Patent

Nos. 6,542,076, 6,548,130 and 5,917,405.

2 The timing of the inter part es review petitions and motion to stay do not present evidence that the defendants sought an unfair tactical advantage. The defendants filed the inter partes petitions for U.S. Patent Nos. 6,548,130 and 6,542,076, within one year of the August 21, 2014 bar date and filed this motion to stay five days later. (D.I. 51 at 9). On June 25, 2015, the defendants filed the inter partes petition for U.S. Patent No. 5,917,405 and stated in its briefthat it planned to file the final inter partes petition for U.S. Patent No. 7,397,363 during the week of July 17, 2014. (D.1. 58 at 2-3). Additionally, Joao Control & Monitoring Systems can be adequately remedied for any delay by "money damages, including any appropriate interest accrued during the stay." In re Bear Creek Techs. Inc., No. 12-md-2344-GMS, 2013 WL 3789471, at *3 n.8 (D. Del. Jul. 17, 2013).

3 The Patent Trial and Appeal Board ("PTAB") decision of whether to review is expected by December 2015. If the review is granted, the defendants will be estopped from asserting in a civil action any readily apparent arguments based on patents or printed publications that were raised or reasonably could have been raised during the inter partes review proceeding. See 35 U.S.C. §§ 311, 315(e)(2), 318(a). A stay will allow the court and the parties to avoid wasting resources on a Markman process to address claims that may be amended or canceled. See Bear Creek, 2013 WL 3789471 at *3 n.8. Moreover, the court and the parties will have the benefit of the inter partes review record in any post-stay Markman process. See Gioe/lo Enters. Ltd v. Mattel, Inc., No. 99-375-GMS, 2001 WL 125340, at *1 (D. Del. Jan. 29, 2001).

4 The parties are in the early stages of discovery.

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Dated: September_)..._, 2015

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