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United States District Court 

Northern District of Californi

a

UNITED STATES DISTRICT COURT 

NORTHERN DISTRICT OF CALIFORNIA 

WILLIAM GRECIA, 

Plaintiff, 

vs. 

TARGET CORPORATION, 

Defendant.

CASE NO. 17-cv-00323-YGR 

ORDER GRANTING MOTION TO STAY AND 

DENYING AS MOOT REQUEST FOR 

SUMMARY JUDGMENT PREFILLING 

CONFERENCE

Re: Dkt. Nos. 51, 54 

Plaintiff Grecia has filed over 40 lawsuits against more than a dozen defendants alleging 

infringement of U.S. Patent No. 8,533,860 (“the ’860 patent”) by various credit card payment 

systems and processes. Several of these lawsuits are currently pending before Judge Richard 

Sullivan in the Southern District of New York (“SDNY Actions”).1

 Three of these suits are 

currently pending before this Court. All three actions were previously stayed pending a claim 

construction order by Judge Sullivan in the SDNY Actions. (Dkt. No. 41.) Now before the Court 

is Target Corporation’s (“Target”) renewed motion to stay this action pending the resolution of 

one of the SDNY Actions, which involves the same payment system at issue here, Grecia v. 

MasterCard Int’l Inc., No. 1:15-cv-09059-RJS (S.D.N.Y.) (“MasterCard Action”). 2 (Dkt. No. 51 

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 Among the SDNY Actions are four actions against various retailers that are based on the 

same theory asserted here against Target (“Retailer Actions”). See Grecia v. 1-800-Flowers.com, 

Inc., No. 16-cv-7022-RJS (S.D.N.Y.); Grecia v. BestBuy.com, LLC, No. 16-cv-7024-RJS 

(S.D.N.Y.); Grecia v. J. Crew Group, Inc., 16-cv-7025; Grecia v. Neiman Marcus Group, Inc., No. 16-cv-7111-RJS (S.D.N.Y.). On February 9, 2017, Judge Sullivan stayed the Retailer Actions 

“until further order of the Court.” (See e.g., Bestbuy.com, Dkt. No. 35.) 

2

 The Court has reviewed the papers submitted by the parties in connection with Target’s 

renewed motion to stay the instant action. The Court has determined that the motion is 

appropriate for decision without oral argument, as permitted by Civil Local Rule 7-1(b) and 

Federal Rule of Civil Procedure 78. See also Lake at Las Vegas Investors Group, Inc. v. Pacific 

Malibu Dev. Corp., 933 F.2d 724, 729 (9th Cir. 1991). Accordingly, the hearing set for 

September 11, 2018 is VACATED. 
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(“Motion”).) 

I. BACKGROUND

Target filed its initial motion to stay this action on February 6, 2017, arguing that the 

resolution of Grecia’s claims against several credit card network companies, including those 

articulated in the MasterCard Action, then-pending before Judge Sullivan, would likely resolve 

Grecia’s present claim against Target. (Dkt. No. 25 at 1.) Grecia filed a limited opposition 

agreeing that the case should be stayed, but arguing that the stay should be pending Judge Sullivan 

lifting his stay order as to the Retailer Actions. (Dkt. No. 38.) In his opposition, Grecia noted that 

the Retailer Actions include “precisely the allegations Grecia makes against Target here” and that 

“Judge Sullivan, based on the ‘customer suit doctrine’ on which Target relies, ordered the five 

Retailer Actions ‘stayed until further order of the Court.’” (Id. at 2.) On March 8, 2017, the Court 

stayed the instant action pending Judge Sullivan’s claim construction order in the SDNY Actions. 

(Dkt. No. 41.) Judge Sullivan held a hearing on claims construction in the SDNY Actions on May 

24, 2018. (See, e.g., Docket in MasterCard Action.) During the July 30, 2018 case management 

conference, the Court lifted the stay as to the two related actions3 and agreed to accept additional 

briefing regarding the applicability of a continued stay in the instant action. Target now renews its 

motion to stay the instant action pending the resolution of the MasterCard Action on the basic 

grounds that the original rationale for the stay remains, namely that Grecia’s present claims 

against Target will be fully resolved after the MasterCard Action. (Motion at 1.) 

II. ANALYSIS

It is well settled that “the power to stay proceedings is incidental to the power inherent in 

every court to control the disposition of the causes on its docket with economy of time and effort 

for itself, for counsel, and for litigants.” Landis v. N. Am. Co., 299 U.S. 248, 254 (1936). 

Whether to issue a stay in a case is based on the court’s sound discretion and basic principles of 

equity, fairness, efficiency, and conservation of judicial resources. See Filtrol Corp. v. Kelleher, 

467 F.2d 242, 244 (9th Cir. 1972). 

 3

 Grecia v. Dish Network L.L.C., Case No. 4:16-cv-00588-YGR and Grecia v. Adobe 

Systems Incorporated, Case No. 4:16-cv-06283-YGR. 
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Disposition of the MasterCard Action will fully resolve all of Grecia’s claims against 

Target. Any settlement of the MasterCard Action will lead to dismissal of claims against Target. 

See Quanta Computer, Inc. v. LG Elecs., Inc., 533 U.S. 617, 625 (2008) (“The longstanding 

doctrine of patent exhaustion provides that the initial authorized sale of a patented item terminates 

all patent rights to that item.”) Alternatively, a determination that MasterCard’s payment system 

technology does not infringe the ’860 patent or that the ’860 patent is invalid would completely 

extinguish Grecia’s claims against Target. Target’s use of the payment system can only infringe 

on the ’860 patent to the extent that the MasterCard system is found to infringe on the patent. 

Grecia agrees. (See Dkt. No. 38 at 1-2 (characterizing the allegations against Target as “alleging 

infringement by ‘using’ the credit card companies’ allegedly infringing systems”).) 

Moreover, even if Grecia were to win a damages award in the MasterCard Action, the 

double-recovery rule would prevent him from obtaining an additional award for use of the same 

infringing technology. See, e.g., Asetek Holdings, Inc. v. CoolIT Systems, Inc., No. C-12-4498-

EMC, 2013 WL 5640905, at *2 (N.D. Cal. Oct. 11, 2013) (citing Transclean Corp. v. Jiffy Lube 

Int’l, Inc., 474 F.2d 1298, 1303 (Fed. Cir. 2007) (stating that “a patentee may not sue users of an 

infringing product for damages if he has collected actual damages from a manufacturer or seller, 

and those damage fully compensate the patentee for infringement by users”)). 

Further, under the customer-suit doctrine, “‘litigation against or brought by the 

manufacturer of infringing goods takes precedence over a suit by the patent owner against 

customers of the manufacturer’ because ‘in reality, the manufacturer is the true defendant in the 

customer suit.’” (See Grecia v. BestBuy.com, LLC, Case No. 16-cv-70254-RJS (S.D.N.Y.), Dkt. 

No. 23 at 2 (citing Katz v. Lear Siegler, Inc., 909 F.2d 1459, 1464 (Fed. Cir. 1990)).) MasterCard, 

as the provider of the allegedly infringing payment system at issue in this case, is in the best 

position to litigate against Grecia’s infringement claims because it has access to all of the relevant 

technical and proprietary information relevant to the infringement question. Moreover, the 

MasterCard Action is at a more advanced stage of litigation and so a stay likely will save litigants 

in this case time and money. See, e.g., Coleco Indus., Inc. v. Empire Plastic Corp., 321 F. Supp. 

146, 148 (S.D.N.Y. 1970) (“[the manufacturer] (as well as the federal courts) would be unduly 
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burdened and inconvenienced by the necessity to try two suits involving the identical subject 

matter at once.”). 

Accordingly, a stay of the instant action pending resolution of the MasterCard Action is in 

the interest of efficiency and conservation of judicial resources. Additionally, a stay will not result 

in prejudice against Grecia. Grecia has previously indicated that a stay will lead to great 

efficiencies. (See Dkt. No. 38 at 1-2.) A stay will not limit the information Grecia can obtain or 

deny him any recovery.4 See Asetek Holdings, No. C-12-4498-EMC, 2013 WL 5640905, at *2. 

III. CONCLUSION

For the reasons stated above, the Court GRANTS Target’s renewed motion to stay the 

instant action pending resolution of the MasterCard Action. Accordingly, the case is STAYED, and 

the Court SETS a Compliance Hearing for Friday, December 7, 2018 at 9:01 a.m. in Courtroom 1 

of the Federal Courthouse at 1301 Clay Street, Oakland, California.5 By Friday, November 30, 

2018, the parties shall file a joint statement informing the Court of the status of the MasterCard 

Action. If the joint statement is timely filed, no appearance may be required and the Compliance 

Hearing may be taken off calendar. Telephonic appearances will be allowed if the statement has 

been submitted in a timely fashion and the Court deems a hearing necessary. If at any time the 

MasterCard Action resolves, the parties shall notify the Court with a joint statement filed within 

five (5) business days thereafter. 

This Order terminates Docket Number 51. 

IT IS SO ORDERED. 

Dated: September 7, 2018 

 YVONNE GONZALEZ ROGERS

 UNITED STATES DISTRICT COURT JUDGE

 4

 As a non-practicing individual, Grecia is not entitled to injunctive relief in this case. See 

eBay Inc., v. Mercexchange, L.L.C., 547 U.S. 388, 391 (2006); Voda v. Cordis Corporation, 536 

F.3d 1311, 1329 (Fed. Cir. 2009). 

5

 In light of the Court’s order staying the instant action, Grecia’s request for a pre-filing 

conference regarding plaintiff’s proposed summary judgment motion (Dkt. No. 54) is DENIED AS 

MOOT.