Gibson Guitar Corporation v. Wal-Mart Stores, Inc. et al

Filing 53

MOTION to Stay Pending USPTO's Reexamination of the Patent in Suit by Amazon.com, Inc., GameStop Corporation, Toys-R-Us, Inc., Harmonix Music Systems, Inc., MTV Networks, Electronic Arts, Inc., Sears, Roebuck & Co., Wal-Mart Stores, Inc., Target Corporation, Kmart Corporation. (Harwell, Aubrey)

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Gibson Guitar Corporation v. Wal-Mart Stores, Inc. et al Doc. 53 IN THE UNITED STATES DISTRICT COURT FOR THE MIDDLE DISTRICT OF TENNESSEE NASHVILLE DIVISION GIBSON GUITAR CORPORATION, Plaintiff, v. AMAZON.COM, INC., GAMESTOP CORPORATION, TOYS-R-US INC., WAL-MART STORES, INC., TARGET CORPORATION, AND KMART CORPORATION, SEARS ROEBUCK & CO, HARMONIX MUSIC SYSTEMS, INC., MTV, and ELECTRONIC ARTS INC., Defendants. Civil Action No. 3:08-0279 United States District Judge Thomas A. Wiseman, Jr. United States Magistrate Judge Juliet Griffin Jury Demand MOTION FOR A STAY PENDING U.S.P.T.O.'S REEXAMINATION OF THE PATENT IN SUIT Dockets.Justia.com Defendants Harmonix Music Systems, Inc., Viacom International Inc. (erroneously named herein as "MTV Networks"), and Electronic Arts Inc. (collectively the "Viacom Defendants"), joined by defendants Amazon.com, Inc., GameStop Corp., Toys-R-Us, Inc., Wal-Mart Stores Inc., Target Corp., Kmart Corp., and Sears, Roebuck and Co. (collectively the "Retailer Defendants"), move the Court to stay proceedings in this case pending the U.S. Patent & Trademark Office's ("PTO") reexamination of the patent in suit, U.S. Patent No. 5,990,405 ("the '405 Patent"). The grounds for this motion are as follows: (a) On April 24, 2008, a Request for Ex Parte Reexamination of the '405 Patent was filed with the PTO. The request, which raises a substantial new question of patentability, asks the PTO to cancel some or all of the claims in the patent based on substantial prior art, or to narrow the scope of the patent's claims with regard to their potential coverage of the defendants' activities. Indeed, even if the claims survive, but are narrowed by the patentee, a result that occurs frequently, this will have a significant impact on claim construction, and Gibson will be unable to collect any damages prior to the date its patent emerges from reexamination. (b) The benefits of allowing the PTO to resolve the validity of the Plaintiff's patent claim prior to proceeding with litigation substantially outweigh any minimal prejudice to Plaintiff that might result from a stay. The advantages of a stay are tremendous: until the PTO's reexamination is complete, the patent claims are a moving target subject to cancellation, amendment, or the addition of new claims. The indeterminate status of the claims will complicate and frustrate any orderly procession of -1- this action, leaving the Court and the parties with insufficient guidance on issues such as the proper scope of discovery, claim construction, and which (if any) patent claims will ultimately be in dispute at trial. The Court's construction of any relevant patent claims that survive reexamination will benefit from the PTO's technical expertise in considering the prior art cited in the reexamination request. On the other side of the equation, any possible prejudice to Plaintiff that might result from a stay is negligible. Filed in support of this motion are Memorandum In Support Of Motion For A Stay Pending U.S.P.T.O.'s Reexamination Of The Patent In Suit and the Declaration of William J. Charron. -2- Dated: May 7, 2008 Respectfully submitted, By: /s/ Aubrey B. Harwell, III Aubrey B. Harwell, III WILLIAM T. RAMSEY AUBREY B. HARWELL, III NEAL & HARWELL, PLC Suite 2000, One Nashville Place 150 4th Avenue North Nashville, TN 37219-2498 Telephone: (615) 244-1713 Facsimile: (615) 726-0573 MARK A. SAMUELS (pro hac vice) ROBERT M. SCHWARTZ (pro hac vice) WILLIAM J. CHARRON (pro hac vice) O'MELVENY & MYERS LLP 400 South Hope Street Los Angeles, CA 90071-2899 Telephone: (213) 430-6000 Facsimile: (213) 430-6407 Attorneys for Defendants Harmonix Music Systems, Inc., Viacom International Inc. (erroneously named in the Complaint as "MTV Networks"), and Electronic Arts Inc. -3- By: /s/ Samuel D. Lipshie (by Aubrey B. Harwell III w/ express permission) Samuel D. Lipshie Samuel D. Lipshie Thor Y. Urness Jonathan D. Rose BOULT CUMMINGS CONNERS BERRY, PLC 1600 Division Street, Suite 700 P.O. Box 340025 Nashville, TN 37203 Telephone: (615) 252-2332 Counsel for Defendants Wal-Mart Stores Inc., Sears, Roebuck & Co., Target Corporation, Kmart Corporation, Amazon.com, Inc., GameStop Corporation, and Toys-R-Us, Inc. -4- CERTIFICATE OF SERVICE I hereby certify that on this 7th day of May 2008, I caused a true and correct copy of the foregoing: MOTION FOR A STAY PENDING U.S.P.T.O.'s REEXAMINATION OF THE PATENT IN SUIT to be served via hand delivery and via the Court's electronic filing system upon the following counsel of record for plaintiff: Douglas R. Pierce, Esq. KING & BALLOW 315 Union Street, Suite 1100 Nashville, TN 37201 Telephone: (615) 259-3456 Facsimile: (615) 726-5419 and to be served via the Court's electronic filing system upon the following counsel of record for plaintiff: Matthew W. Siegal, Esq. Richard Eskew, Esq. Jason M. Sobel, Esq. STROOCK & STROOCK & LAVAN LLP 180 Maiden Lane New York, NY 10038-4982 Telephone: (212) 806-5400 /s/ Aubrey B. Harwell, III Aubrey B. Harwell, III LA2:860409.1 -5-