Whitewater West Industries, LTD. v. Pacific Surf Designs, Inc. et al
ORDER Denying 11 Motion to Consolidate and Lift Stay. Signed by Judge Roger T. Benitez on 8/3/2017. (knb)
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF CALIFORNIA
WHITEWATER WEST INDUSTRIES,
LTD., a Canadian corporation,
ORDER DENYING MOTION TO
CONSOLIDATE AND LIFT STAY
Case No.: 3:17-cv-01118
PACIFIC SURF DESIGNS, INC., a
Delaware corporation, and FLOW
SERVICES, a California corporation,
Plaintiff Whitewater West Industries, Ltd. (“Whitewater”) has moved to
consolidate this action with FlowRider Surf, Ltd. et al. v. Pacific Surf Designs, Inc., No.
3:15-cv-01879-BEN-BLM (the “FlowRider action”) and lift the stay in that case.
Defendant Pacific Surf Designs, Inc. (“PSD”) opposes consolidating the cases and lifting
the stay in the FlowRider action. However, both parties agree that the Court should (1)
adopt in this case the claim construction order in the FlowRider action and (2) order that
all discovery conducted in the FlowRider action be treated as if conducted in this case.
Under Federal Rule of Civil Procedure 42, the court may consolidate actions that
involve common questions of law or fact. Fed. R. Civ. P. 42(a). “The district court has
broad discretion under this rule to consolidate cases pending in the same district.”
Investors Research Co. v. U.S. Dist. Ct. for the Cent. Dist. of Cal., 877 F.2d 777, 777 (9th
This case and the FlowRider action are related patent infringement lawsuits. Both
cases have been assigned to the same district judge and magistrate judge pursuant to the
Court’s Local Rules. While both actions concern patents claiming sheet wave technology
in water rides, the two asserted patents have different inventors and do not share any
claims or disputed claim terms. The FlowRider action originally asserted infringement of
two patents, the ’016 patent and the ’589 patent, but this Court dismissed the ’589 patent,
concluding that the plaintiff asserting infringement of that patent lacked standing to sue.
Whitewater has corrected the standing defect and now alleges infringement of the ’589
patent in this case.
The FlowRider action is currently stayed while the ’016 patent proceeds through
inter partes review with the Patent Trial and Appeal Board (“PTAB”) of the U.S. Patent
and Trademark Office. The PTAB’s review will either invalidate the asserted claims and
reduce the number of issues before the Court, or find the claims valid, in which case PSD
will be estopped from asserting those invalidity contentions. This Court granted a limited
stay of the FlowRider action for six months. Less than four months remain on the stay.
Having considered the issues, in the exercise of its discretion, the Court DENIES
Plaintiff’s motion to consolidate the cases and lift the stay in the FlowRider action. The
FlowRider action will remain stayed during its PTAB review. The Court’s decision is
without prejudice to Plaintiff or Defendants moving to consolidate the cases at a later
time, such as a consolidated proceeding for trial. Furthermore, the Court ORDERS that
its claim construction order in the FlowRider action (ECF No. 88) and all discovery from
the FlowRider action apply to the instant case. The Court DENIES Defendants’ request
for attorneys’ fees in responding to this motion.
IT IS SO ORDERED.
Dated: August 3, 2017
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?