3RD EYE SURVEILLANCE, LLC v. USA

Filing 622

**RE-DOCKETED 621 FOR POSTING TO THE COURT'S WEBSITE** UNREPORTED ORDER denying 618 Motion Lifting Stay. Signed by Senior Judge Charles F. Lettow. (tb) Service on parties made.

In the United States Court of Federal Claims
No. 15-501C
(Filed: February 23, 2023)
(NOT TO BE PUBLISHED)
3RD

EYE SURVEILLANCE, LLC and
DISCOVERY PATENTS, LLC,
Plaintiffs,
v.
UNITED STATES,
Defendant,
and
ELBIT SYSTEMS OF AMERICA,
LLC, GENERAL DYNAMICS ONE
SOURCE LLC, and NORTHROP
GRUMMAN SYSTEMS
CORPORATION,
Defendant-Intervenors.

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Stephen A. Kennedy, Kennedy Law, P.C., Dallas, Texas, for plaintiffs.
James P. Hughes, Trial Attorney, Intellectual Property Section, Civil Division, United States
Department of Justice, Washington, D.C., for defendant. With him on the briefs were Brian Boynton,
Principal Deputy Assistant Attorney General, and Gary L. Hausken, Director, Intellectual Property
Section, Civil Division, United States Department of Justice, Washington, D.C.
Kurt G. Calia, Covington & Burling LLP, Palo Alto, California, for defendant-intervenor
Elbit Systems of America, LLC. Of counsel were Ranganath Sudarshan, Matthew Kudzin, Yiye Fu,
Jennifer D. Cieluch, and Ryan Roberts, Covington & Burling LLP, Palo Alto, California.
Scott A. Felder, Wiley Rein, LLP, Washington, D.C., for defendant-intervenor General
Dynamics One Source LLC.
Gregory H. Lantier, Wilmer Cutler Pickering Hale and Dorr LLP, Washington, D.C., for
defendant-intervenor Northrop Grumman Systems Corporation.

ORDER
LETTOW, Senior Judge.
Pending before the court in this patent infringement case is plaintiffs’ motion to lift the
stay, coupled with a request for a status conference to schedule trial, filed on February 08, 2023.
Pls.’ Mot. to Lift Stay and Request for Status Conference to Schedule Trial (“Pls.’ Mot.”), ECF
No. 618. Plaintiffs filed a notice of stipulations limiting the scope of the claims asserted in their
motion on February 14, 2023. Notice of Stipulation Concerning Pls.’ Infringement Claims
(“Pls.’ Notice), ECF No. 619. Defendants filed their opposition to plaintiffs’ motion on February
22, 2023. Defs.’ Opp’n to Pls.’ Mot. to Lift Stay and Request for Status Conference to Schedule
Trial (“Defs.’ Resp.”), ECF No. 620.
The court granted defendants’ motion to stay proceedings on July 27, 2022. Opinion and
Order Granting Mot. to Stay (“Opinion and Order”), ECF No. 617. Defendants initially
contended that proceedings should be stayed because a non-party to the case initiated ex parte
reexamination proceedings of the three patents at issue before the United States Patent and
Trademark Office (“PTO”). See Opinion and Order. The three patents at issue are the ’980
Patent, the ’344 Patent, and the ’085 Patent. Plaintiffs opposed defendants’ motion, averring that
some or all of the patent claims at issue would survive reexamination and plaintiffs would
therefore be prejudiced by the delay that the stay would cause. See Opinion and Order.
Ultimately, the court granted the motion to stay “pending a final decision in the pending ex parte
reexaminations.” Opinion and Order.
In their currently pending motion, plaintiffs contend that the stay should be lifted because
the PTO upheld some of the claims of one of the three patents at issue, the ’980 Patent. See Pls.’
Mot. at 1. Although the claims of the ’344 Patent and the ’085 Patent are still pending at the
PTO, plaintiffs ask the court to lift the stay “as to the allegations involving the ’980 Patent for all
purposes and a trial should be set on the ’980 Patent for Bellwether System 1 . . . and Systems 45 that deploy the Biometric Entry/Exist Systems.” Pls.’ Mot. at 4-5. In their stipulation,
plaintiffs cabined the number of claims from the ’980 Patent that they argue Bellwether System 1
and Bellwether System 4-5 infringe upon.1 Now, plaintiffs stipulate that they “they will not
assert infringement of claims 11-31 of the ’980 Patent in the litigation . . . [and] Discovery
Patents will not appeal the examiner’s final determination with respect to those claims.” Pls.’
Notice at 3. Therefore, plaintiffs will focus on infringement of claims 1-10. See Pls.’ Notice at
3. In addition, plaintiffs stipulate that “they will not assert infringement of any of the claims in
the ’085 Patent or the ’344 Patent against Bellwether Systems 1, 4, and 5.” Pls.’ Notice at 3.
In their response, defendants argue that plaintiffs’ motion is premature. Defendants agree
with plaintiffs that claims 1-10 of the ’980 Patent have not been rejected by the examiner. Defs.’
“Prior to the July 27 order staying the litigation, [p]laintiffs asserted that Bellwether
System 1 infringed Claims 1, 4, 8, 22 and 31 of the ’980 Patent and various claims of the ’344
and ’085 Patents. Plaintiffs asserted that Bellwether Systems 4 and 5 infringed claims 1-4, 8, 1113 and 31 of the ’980 Patent and certain claims of the ’344 and ’085 Patents.” Pls.’ Notice at 2
(citations omitted).
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Resp. at 1. At the same time, defendants represent that claims 11-13 have been rejected by the
examiner and their reexamination is still underway. Defs.’ Resp. at 1. Defendants also represent
that the claims of the ’085 Patent and the ’344 Patent have been rejected but appeals are pending
before the Patent Trial and Appeal Board and thus their reexaminations are still proceeding.
Defs.’ Resp. at 1. Defendants state that “the PTO cannot complete the reexamination and issue
the reexamination certificates until the appeals are complete.” Defs.’ Resp. at 1. Regarding the
stipulations, defendants contend that they would not inhibit the ongoing proceedings from
affecting the scope of the non-cancelled claims, they would not inhibit the currently rejected
claims from having force later because plaintiffs have not filed anything with the PTO, and they
would not inhibit plaintiffs from bringing claims in the future. Defs.’ Resp. at 2. Defendants
therefore argue that despite plaintiffs’ stipulations, the stay should continue until the PTO
“complete[s] its work.” Defs.’ Resp. at 1.
Because claims of the patents at issue are still pending before the PTO, the stay will
continue and plaintiffs’ motion to lift the stay and request for a status conference to schedule trial
is DENIED. Therefore, proceedings will continue to be stayed pending a final decision in the
pending ex parte reexaminations and the parties are requested to file a joint status report within
ten business days after the final determination in those proceedings.
It is so ORDERED.

s/ Charles F. Lettow
Charles F. Lettow
Senior Judge

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