Whitewater West Industries, LTD. v. Pacific Surf Designs, Inc. et al

Filing 39

ORDER Denying 11 Motion to Consolidate and Lift Stay. Signed by Judge Roger T. Benitez on 8/3/2017. (knb)

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UNITED STATES DISTRICT COURT

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SOUTHERN DISTRICT OF CALIFORNIA

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WHITEWATER WEST INDUSTRIES,
LTD., a Canadian corporation,

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ORDER DENYING MOTION TO
CONSOLIDATE AND LIFT STAY

Plaintiff,

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Case No.: 3:17-cv-01118

v.
PACIFIC SURF DESIGNS, INC., a
Delaware corporation, and FLOW
SERVICES, a California corporation,
Defendants.

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Plaintiff Whitewater West Industries, Ltd. (“Whitewater”) has moved to

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consolidate this action with FlowRider Surf, Ltd. et al. v. Pacific Surf Designs, Inc., No.

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3:15-cv-01879-BEN-BLM (the “FlowRider action”) and lift the stay in that case.

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Defendant Pacific Surf Designs, Inc. (“PSD”) opposes consolidating the cases and lifting

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the stay in the FlowRider action. However, both parties agree that the Court should (1)

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adopt in this case the claim construction order in the FlowRider action and (2) order that

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all discovery conducted in the FlowRider action be treated as if conducted in this case.

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Under Federal Rule of Civil Procedure 42, the court may consolidate actions that

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involve common questions of law or fact. Fed. R. Civ. P. 42(a). “The district court has

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broad discretion under this rule to consolidate cases pending in the same district.”

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Investors Research Co. v. U.S. Dist. Ct. for the Cent. Dist. of Cal., 877 F.2d 777, 777 (9th

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Cir. 1989).
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3:17-cv-01118

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This case and the FlowRider action are related patent infringement lawsuits. Both

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cases have been assigned to the same district judge and magistrate judge pursuant to the

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Court’s Local Rules. While both actions concern patents claiming sheet wave technology

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in water rides, the two asserted patents have different inventors and do not share any

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claims or disputed claim terms. The FlowRider action originally asserted infringement of

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two patents, the ’016 patent and the ’589 patent, but this Court dismissed the ’589 patent,

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concluding that the plaintiff asserting infringement of that patent lacked standing to sue.

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Whitewater has corrected the standing defect and now alleges infringement of the ’589

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patent in this case.

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The FlowRider action is currently stayed while the ’016 patent proceeds through

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inter partes review with the Patent Trial and Appeal Board (“PTAB”) of the U.S. Patent

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and Trademark Office. The PTAB’s review will either invalidate the asserted claims and

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reduce the number of issues before the Court, or find the claims valid, in which case PSD

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will be estopped from asserting those invalidity contentions. This Court granted a limited

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stay of the FlowRider action for six months. Less than four months remain on the stay.

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Having considered the issues, in the exercise of its discretion, the Court DENIES

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Plaintiff’s motion to consolidate the cases and lift the stay in the FlowRider action. The

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FlowRider action will remain stayed during its PTAB review. The Court’s decision is

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without prejudice to Plaintiff or Defendants moving to consolidate the cases at a later

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time, such as a consolidated proceeding for trial. Furthermore, the Court ORDERS that

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its claim construction order in the FlowRider action (ECF No. 88) and all discovery from

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the FlowRider action apply to the instant case. The Court DENIES Defendants’ request

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for attorneys’ fees in responding to this motion.

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IT IS SO ORDERED.
Dated: August 3, 2017

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3:17-cv-01118