I imagine if one of the parties requested a stay pending the results of the USPTO Ruling it would be granted since the following was used as a counter to one of TPL's arguments for a change of venue. Not that it would matter much now since it should be coming any, month, week, or hopefully day.

From Judge Fogel Ruling:

" In addition, the relevance of one of 7 these patents (the ‘336 patent) is suspect as it is in reexamination before the USPTO, where all claims currently stand rejected."

(But not in Germany)

Note Bold

I. DISCUSSION

Civ. L.R. 7-9(b)(2) allows a party to seek reconsideration of a prior order where there has been an “emergence of new material facts or a change of law occurring after the time of such order.” See also Sch. District No. 1J, Multnomah County v. Acands, Inc., 5 F.3d 1255, 1263 (9th Cir. 1993) (“There may also be other, highly unusual, circumstances warranting reconsideration.”). The Court agrees that the dismissal of Asustek is a new material fact relevant to the management of the related cases, but as discussed below the removal of Asustek does not alter the Court’s conclusion that the Northern District of California is the proper venue. For the convenience of the parties or in the interest of justice, a district court may transfer an action to any other district where the suit may have been brought. 28 U.S.C. § 1404(a). When two actions are pending in separate districts, “[t]he general rule favors the forum of the first-filed action, whether or not it is a declaratory judgment action.” Micron, 518 F.3d at 904. Nonetheless, a district court may transfer a case out of the first-filed forum “in the interest of justice or expediency, as in any issue of choice of forum.” Id. As set forth in the prior order, the convenience factors strongly favor retaining the litigation in this Court, and the absence of Asustek does not change this determination. Moreover, the declaratory relief actions filed by Acer and HTC in this Court still are the first-filed litigation involving the subject patents. Accordingly, the only remaining issue is whether the dismissal of Asustek has changed the judicial economy analysis sufficiently to overcome the factors favoring retention of the instant actions. TPL raises essentially the same arguments it made previously, namely that (1) judicial economy favors transfer because Judge Ward is familiar with the MMP patents, and (2) there is a risk of inconsistent rulings if this Court were to construe the same patents in a different proceeding. As to the second factor, this Court affirms its earlier statement that it will accord deference to Judge Ward’s claim construction as persuasive authority. See Mendenhall v. Cedarapids, Inc., 5 F.3d 1557, 1570 (Fed. Cir. 1993). With respect to the first argument, the Court is not persuaded that the elimination of the CCP patents affects the prior judicial economy analysis at all, let alone enough to overcome the presumption favoring the first-filed court and the convenience of the parties. As the Federal Circuit observed in Micron, the fact that the proposed transferee court previously has hosted litigation involving some of the patents at issue is of minimal import. See 518 F.3d at 905. See also ICU Med., Inc. v. Rymed Techs., Inc., No. 07-468-JJF, 2008 WL 205307, at *5 (D. Del. Jan. 23, 2008) (proposed transferee court’s familiarity with patents is a factor to consider but “the Court does not find that factor to be dispositive.”); ConnecTel, LLC v. In addition, the relevance of one of 7 these patents (the ‘336 patent) is suspect as it is in reexamination before the USPTO, where all claims currently stand rejected. 8 Moreover, pursuant to the Federal Circuit’s recent decision in In re TS Tech USA Corp., Misc. No. 888, 2008 WL 5397522 (Fed. Cir. Dec. 29, 2008), the convenience factors in the instant actions would favor transfer of any litigation between the parties out of the Eastern District of Texas. Cisco Sys., Inc., No. 2:04-CV-396, 2005 WL 366966, at *3 (E.D. Tex. Feb. 16, 2005) (“The present case involves a different defendant and different products, so it is not in the interest of judicial economy to transfer this case.”). Because different products are at issue here, there is no guarantee that the same claims will be asserted against Acer and HTC as were previously asserted in the Eastern District of Texas. Likewise, even if the actions were transferred to Judge Ward, Plaintiffs would still be entitled to full briefing and argument, as they are not collaterally estopped by the prior claim construction.7 TPL also asserts that the fact that it asserted one of the patents (the ‘890 patent) first means that the first to file analysis is essentially neutral as between the parties. HTC and Acer moved to amend their first amended complaints to add the ‘890 patent in July 2008 and November 2008, respectively. However, contrary to TPL’s position, this does not change the fact that HTC and Acer filed their complaints for declaratory relief first. To allow the addition of related claims to change the parties’ stance with respect to who filed first would allow manipulation of venue. See Micron, 518 F.3d at 903 (it is of little import “that the second-filed infringement action is broader than the first filed declaratory judgment action…because a patent holder may often easily file an artificially broader infringement suit to avoid declaratory judgment jurisdiction… [and if] a patent holder could simply name another defendant or add a few additional claims to the later filed infringement, then the Supreme Court’s more lenient
standard for the declaratory judgment plaintiff would lose its primary intended effect.”). Accordingly, the motion for reconsideration will be denied.