Telcom Ventures LLC v. Apple, Inc.

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UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
TELCOM VENTURES LLC,
Plaintiff,
v.
APPLE INC,
Defendant.
Case No. 25-cv-05041-RFL
ORDER DENYING MOTION TO LIFT
STAY
Re: Dkt. No. 122
This patent case was previously stayed pending inter partes review (“IPR”). Telcom
Ventures LLC v. Apple Inc., No. 25-CV-05041-RFL, 2026 WL 84431, at *1 (N.D. Cal. Jan. 12,
2026). Since the stay was put in place, the U.S. Patent and Trademark Office (“USPTO”)
declined to initiate IPR on any of the relevant patents, though it later ordered ex parte
reexamination (“EPR”) reaching every claim in three of the four patents at issue. Because of
those changed circumstances, Telcom Ventures LLC moves to lift the stay. The motion is
DENIED. This order assumes the reader is familiar with the facts of the case, the applicable
legal standards, and the parties’ arguments.
The simplification of issues factor is the only factor materially impacted by the changed
circumstances. Unlike IPR, EPR does not give rise to statutory estoppel. See 35 U.S.C.
§ 315(e). While that means EPR has less of a simplifying effect than IPR, it does not mean that
EPR will have no simplifying effect. “[R]eexamination would still simplify issues by ‘providing
the court with [the] expert opinion of the PTO and clarifying the scope of the claims.’” See
Relink US LLC v. Tesla Inc., No. 25-CV-03365-RFL, 2025 WL 2909964, at *2 (N.D. Cal. Oct.
14, 2025) (citation omitted). Moreover, amendments to the claims made during EPR would
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likely affect the scope of this litigation. See id. And Apple has stipulated that if the stay is
maintained, it “will not assert in this litigation any ground of invalidity under 35 U.S.C. Sections
102 or 103 that was presented to the USPTO in the granted EPR requests.” (Dkt. No. 123 at 9–
10.)1 While the USPTO has declined to order EPR of one of the patents at issue, the overlap in
subject matter suggests that EPR of the other patents will still simplify litigation over that patent.
The remaining factors continue to weigh in favor of a stay, including that a continued
stay is unlikely to prejudice Telcom because it and Apple are not direct competitors. See
Telcom, 2026 WL 84431, at *1–2. Apple’s two-to-four-month delay in seeking EPR after IPR
institution was denied was reasonable under the circumstances and is not a basis to find
prejudicial delay or gamesmanship. Accordingly, Telcom’s motion to lift the stay is DENIED.
IT IS SO ORDERED.
Dated: October 9, 2026
RITA F. LIN
United States District Judge
1 All citations to page numbers in filings on the docket refer to ECF pagination.
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