Hunter Douglas, Inc. et al v. Nien Made Enterprise Co. Ltd. et al

Filing 86

MINUTE ORDER denying 74 Defendants' Motion to Stay Pending the USPTO's Review of Inter Partes Review Petitions. By Magistrate Judge Michael J. Watanabe on 1/14/14.(mnfsl, )

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO
Civil Action No. 13-cv-01412-MSK-MJW
HUNTER DOUGLAS, INC., and
ANDREW J. TOTI TESTAMENTARY TRUST,
Plaintiff(s),
v.
NIEN MADE ENTERPRISE CO. LTD.,
NORMAN INTERNATIONAL, INC.,
NORMAN INTERNATIONAL COLORADO, LLC,
RICHFIELD WINDOW COVERINGS, INC. d/b/a NIEN MADE U.S.A., and
GLOBAL CUSTOM COMMERCE, INC. d/b/a BLINDS.COM,
Defendant(s).
MINUTE ORDER
Entered by Magistrate Judge Michael J. Watanabe
It is hereby ORDERED that Defendants’ Motion to Stay Pending the USPTO’s
Review of Inter Partes Review Petitions (docket no. 74) is DENIED for the following
reasons.
In determining whether to grant a stay pending review of the U.S. Patent and
Trademark Office [“USPTO”], the court considers the a number of factors and the
totality of the circumstances. Those factors include: (1) whether a stay will simplify the
issues in question and streamline the trial; (2) whether discovery is complete and
whether a trial date has been set; (3) whether a stay would unduly prejudice the
nonmoving party or present a clear tactical advantage for the moving party; and (4)
whether a stay will reduce the burden of litigation on the parties and on the court.
Broadcast Innovation, L.L.C., v. Charter Comm., Inc., 2006 WL 1897165, at *4 (D. Colo.
July 11, 2006). See also SSW Holding Co. v. Schott Gemtron Corp., 2013 WL
4500091, at *3 (W.D. Ky. Aug. 21, 2013); Black & Decker Inc. v. Positec USA, Inc.,
2013 WL 5718460, at *1 (N.D. Ill. Oct 1, 2013).
Here, the court finds that the USPTO will probably not even determine whether to
review the four patents in question for another four or five months, noting that
Defendant Norman International, Inc., filed its petitions for inter partes reviews [“IPR”]
on December 19 and 20, 2013, and the subject motion (docket no. 85) was filed with
court on December 20, 2013. Defendant International, Inc., is the only Defendant
which has filed IPRs as of the date of this minute order. At this stage of this case, the

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USPTO has not yet decided whether to review the four patents in question for inter
partes review.
In addition, the court finds that this case is not in an early stage of proceeding.
There was a Rule 16 Scheduling Order (docket no. 47) entered in this case on
October 8, 2013. At this stage, discovery is ongoing. The deadline to join parties has
expired; the deadline for patentees to identify asserted claims and disclose initial claims
charts has expired; the deadline for alleged infringers to disclose initial claim charts has
expired; the deadline for alleged infringers’ prior art statement, including but not limited
to invalidity contentions has expired; and the deadline for patentees’ prior art statement
has expired. The deadline for parties to exchange terms to be construed is January 24,
2014. Per the Scheduling Order (docket no. 47) at paragraph 8, all discovery needed
for the claim construction phase of this case will be completed by April 4, 2014. A claim
construction hearing is requested to be set before Chief Judge Krieger in April 2014 per
the Scheduling Order (docket no. 47) at paragraph 8. This court notes that it will take
four to five months before a decision is made as to Defendant Norman International,
Inc.’s petitions for inter partes reviews. It is clear that Chief Judge Krieger will likely
have resolved all claim construction issues and much of the discovery in this case will
be completed except for additional discovery that may be needed as out in the
Scheduling Order (docket no. 47) at paragraph 8 once Chief Judge Krieger rules on the
claim construction, and such ruling is likely to take place before any ruling is entered on
Defendant Norman International, Inc., petitions for inter partes reviews.
Further, this court finds that a stay of discovery would unduly prejudice Plaintiff
and would create a clear tactical advantage for Defendants [i.e., moving party]. If a stay
is granted, it appears that it will take up to two years before the IPRs are ruled upon.
This assumes that Defendant Norman International, Inc.’s petitions for inter partes
reviews are granted for review by the USPTO. This court finds that Plaintiff would be
unduly prejudice since during this approximately two-year period of time Defendants
could continue in making sales on the alleged infringing products that could cause
continuing harm to Plaintiffs, noting that Defendants are direct competitors.
Lastly, this court finds that a stay of discovery is not likely to reduce the burden of
litigation on the parties or the court. As stated by the Northern District of California in
the case of Yodlee, Inc. v. Ablaise Ltd., 2009 WL 112857, at *5 (N.D. Cal. Jan. 16,
2009), and Esco Corp. v. Berkeley Forge & Tool, Inc., 2009 WL 3078463, at *3 (N.D.
Cal. Sept. 28, 2009), “[t]o truly simplify the issues . . . the outcome of the reexamination
must finally resolve all issues in the litigation.” Here, only Defendant Norman
International, Inc., has filed petitions for inter partes reviews. Thus, “when
reexamination potentially will eliminate only one issue out of many, a stay is not
warranted.” See IMAX Corp. v. In-Three, Inc., 385 F. Supp.2d 1030, 1032 (C.D. Cal.
2005). Furthermore, this court finds that Defendants’ estoppel argument in support of a
stay of discovery as to all Defendants lacks merit.
Accordingly, this court concludes that Defendants have failed to meet their

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burden of proof on the four factors as outlined in Broadcast Innovation, L.L.C., supra.
For these reasons, the subject motion (docket no. 74) should be denied.
Date: January 14, 2014