Klein v. Cultured Gourmet, LLC
Filing
17
ORDER by Judge Phyllis J. Hamilton granting 12 Motion to Stay. (pjhlc2, COURT STAFF) (Filed on 11/13/2017)
1
2
3
4
UNITED STATES DISTRICT COURT
5
NORTHERN DISTRICT OF CALIFORNIA
6
7
ERIC A. KLEIN,
9
10
United States District Court
Northern District of California
11
Case No. 17-cv-05034-PJH
Plaintiff,
8
v.
ORDER GRANTING MOTION TO STAY
CULTURED GOURMET, LLC,
Re: Dkt. No. 12
Defendant.
12
13
14
Before the court is defendant Cultured Gourmet’s (“Gourmet”) motion to stay this
15
litigation pending the decision of the Patent and Trademark Office (the “PTO”) on whether
16
to grant or deny Gourmet’s request for reexamination of U.S. Patent No. D 769,060 (the
17
“‘060 patent”), the sole patent at issue in this case. The matter is fully briefed and
18
suitable for decision without oral argument. Accordingly, the hearing set for November
19
22, 2017 is VACATED.
20
Plaintiff Eric Klein (“Klein”) filed this action on August 30, 2017, alleging that
21
Gourmet had infringed and continues to infringe on Klein’s ‘060 patent. See Dkt. 1 ¶ 4.
22
The ‘060 patent consists of a single claim for a decorative design for a device useful for
23
fermentation of vegetables in a mason jar.
24
On October 9, 2017, two days after being served, Gourmet filed with the PTO a
25
request for ex parte reexamination of the ‘060 patent. That request argues, amongst
26
other things, that Klein failed to disclose invalidating prior art during the prosecution of the
27
‘060 patent. See generally Dkt. 12-1, Ex. A at 14-30. Just ten days after being served,
28
Gourmet filed the present motion to stay. While Klein opposes the motion, he makes no
1
attempt to address the relevant stay factors outlined in Gourmet’s motion and discussed
2
below.
Having read the parties’ papers and carefully considered their arguments and the
3
4
relevant legal authority, the court hereby GRANTS the motion as follows.
5
“Courts have inherent power to manage their dockets and stay proceedings,
6
including the authority to order a stay pending conclusion of a PTO reexamination.”
7
Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1426, 27 (Fed. Cir. 1988) (citations omitted).
8
“Courts in this district examine three factors when determining whether to stay a patent
9
infringement case pending review or reexamination of the patents: (1) whether discovery
is complete and whether a trial date has been set; (2) whether a stay will simplify the
11
United States District Court
Northern District of California
10
issues in question and trial of the case; and (3) whether a stay would unduly prejudice or
12
present a clear tactical disadvantage to the nonmoving party.” PersonalWeb Tech., LLC
13
v. Apple Inc., 69 F. Supp. 3d 1022, 1025 (N.D. Cal. 2014) (quotations and citation
14
omitted).1
15
The court finds that the first factor (stage of the litigation) favors a stay, because
16
the parties have not engaged in discovery, the claims have not been construed, and no
17
pretrial or trial dates have been set. Gourmet has also acted expeditiously in filing its
18
request for reexamination and the present motion to stay.
The second factor (simplification of issues and trial) favors a stay. The ‘060 patent
19
20
consists of a single claim. The reexam, if accepted, will either dispositively resolve this
21
litigation (if the patent is invalidated) or substantially narrow the issues at trial (if the
22
patent is upheld).
The third factor (prejudice to the nonmoving party) also favors a stay. As an initial
23
24
matter, it is unclear if Klein even argues he will be prejudiced by the stay. At best, Klein
25
26
27
28
1
Plaintiff argues that it is unconstitutional for the court to stay this litigation in favor of the
PTO’s reexamination. This argument contradicts controlling authority. See Patlex Corp.
v. Mossinghoff, 758 F.2d 594, 603-06 (Fed. Cir. 1985); Joy Tech., Inc. v. Manbeck, 959
F.2d 226, 228-29 (Fed. Cir. 1992) (reaffirming Patlex and the constitutionality of the
reexamination procedure).
2
1
argues that if the court is inclined to grant a stay, Gourmet should be required to post a
2
bond of $200,000 because “it is a shell LLC without any significant assets.” Dkt. 15 at 7.
3
Despite attempting to do so, Klein has not provided any support showing that the
4
$200,000 bond amount is appropriate or that Gourmet is a “shell LLC.” Klein’s bond
5
request is denied and Klein’s argument fails to establish any prejudice.2
The court is also hard-pressed to find any prejudice. As discussed above, with
6
respect to both the timing of the reexamination request and this motion to stay, Gourmet
8
acted expeditiously. Further, while the PTO has not yet granted Gourmet’s
9
reexamination request, any potential prejudice is mitigated by the fact that the PTO must
10
decide by December 11, 2017, whether it will initiate reexamination. See 2209 Ex Parte
11
United States District Court
Northern District of California
7
Reexamination (R-07.2015), MPEP § 2209(E) (“Decision on a Request for
12
Reexamination under 25 U.SC. [§] 302 must be made no later than three months from
13
the filing . . .”). “It is not uncommon for [ ] court[s] to grant stays pending reexamination
14
prior to the PTO deciding to reexamine the patent.” Pragmatus AV, LLC v. Facebook,
15
Inc., No. 11-02168C, 2011 WL 4802958, at *3 (N.D.Cal. Oct. 11, 2011); see also
16
Evolutionary Intelligence LLC v. Apple, Inc., No. 13-04201C, 2014 WL 93954, at *2 (N.D.
17
Cal. Jan 9, 2014).
18
If the PTO decides not to accept the reexamination request, the case will be
19
stayed for less than one month, which could hardly be considered prejudicial. If the PTO
20
accepts the request, then the PTO’s conclusion will resolve or substantially narrow the
21
issues in this action.
In light of the above, the court finds that a stay would be beneficial, at least until
22
23
the PTO decides whether to grant Gourmet’s requested reexamination. The court
24
GRANTS the motion for a stay, pending the PTO’s decision regarding Gourmet’s request
25
for reexamination of the ‘060 patent. If the PTO accepts Gourmet’s request, the stay will
26
27
28
2
In the alternative, Klein requests the court enjoin Gourmet from selling the allegedly
infringing product during the pendency of any stay. See Dkt. 15 at 8. This request is also
denied.
3
1
continue until the PTO completes its reexamination. If the request for reexamination is
2
denied, the court will lift the stay, and will schedule a case management conference. In
3
either case, the parties shall advise the court as soon as the PTO has issued a decision
4
accepting or denying Gourmet’s reexamination request.
5
6
7
8
9
IT IS SO ORDERED.
Dated: November 13, 2017
__________________________________
PHYLLIS J. HAMILTON
United States District Judge
10
United States District Court
Northern District of California
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
4
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?