Asetek Holdings, Inc et al v. Coolit Systems Inc

Filing 59

ORDER by Judge Edward M. Chen granting 52 Plaintiff's Motion for Leave to File Sur-Reply; denying 20 Defendant's Motion to Stay (emclc1, COURT STAFF) (Filed on 1/23/2013)

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1 2 3 4 5 UNITED STATES DISTRICT COURT 6 NORTHERN DISTRICT OF CALIFORNIA 7 8 ASETEK HOLDINGS, INC., et al., 9 Plaintiffs, ORDER DENYING DEFENDANT’S MOTION TO STAY v. 11 For the Northern District of California United States District Court 10 No. C-12-4998 EMC COOLIT SYSTEMS, INC., 12 Defendant. ___________________________________/ (Docket No. 20) 13 14 15 Currently pending before the Court is CoolIT’s motion to stay proceedings pending 16 reexamination of the ‘764 patent. Having considered the parties’ briefs and accompanying 17 submissions,1 as well as the oral argument of counsel, the Court DENIES the motion without 18 prejudice for the reasons stated on the record and as supplemented herein. 19 A district court has the discretion to stay judicial proceedings pending reexamination of a 20 patent. See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1426-27 (Fed.Cir.1988). In determining whether 21 to grant a stay pending reexamination, courts generally consider: “(1) whether discovery is complete 22 and whether a trial date has been set; (2) whether a stay will simplify the issues in question and trial 23 of the case; and (3) whether a stay would unduly prejudice or present a clear tactical disadvantage to 24 the non-moving party.” Telemac Corp. v. Teledigital, Inc., 450 F.Supp.2d 1107, 1110 (N.D. Cal. 25 2006) (Wilken, J.). 26 27 28 1 This includes Asetek’s sur-reply. Asetek’s motion for leave to file a sur-reply is granted. 1 Taking into account the above factors, the Court denies CoolIT’s motion to stay. Although 2 this case is in the early stages of litigation, which would generally weigh in favor of a stay, other 3 considerations weigh against a stay. For example, arguably, a stay is not likely to substantially 4 simplify the issues in the lawsuit, particularly because, even though the PTO has granted 5 reexamination with respect to the ‘764 patent, it has denied reexamination with respect to the ‘362 6 patent. There is sufficient potential overlap in the litigation of these two patents that counsels in 7 favor of keeping them both on the same litigation track. As for prejudice, Asetek and CoolIT are 8 direct competitors, and Asetek has provided evidence to support its claim that a stay could have 9 “‘effects that would be difficult to reverse after the fact.’” Interwoven, Inc. v. Vertical Computer 11 For the Northern District of California United States District Court 10 Sys., No. C 10-04645 RS, 2012 U.S. Dist. LEXIS 30946, at *8 (N.D. Cal. Mar. 8, 2012). In any event, proceeding with exchange of contentions and discovery at least until claim 12 construction briefing will not substantially prejudice either party. Thus, although the Court denies 13 Asetek’s motion, the denial is without prejudice. Exchange of contentions and discovery shall 14 proceed. The Court shall hold a case management conference in this case on May 23, 2013, at 10:30 15 a.m., at which point the parties will be able to provide a further update as to the status of the 16 reexamination proceeding before the PTO. 17 This order disposes of Docket Nos. 20 and 52. 18 19 IT IS SO ORDERED. 20 21 Dated: January 23, 2013 22 _________________________ EDWARD M. CHEN United States District Judge 23 24 25 26 27 28 2

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