Southeastern Metals Manufacturing Company, Inc. v. Millennium Metals, Inc. et al

Filing 23

ORDER granting 21 Motion to stay with directions to the Clerk. Signed by Senior Judge Harvey E. Schlesinger on 3/21/2012. (RH)

FILED
UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
JACKSONVILLE DIVISION

1012 EAi~ 22 Ali 10: 15

SOUTHEASTERN METALS
MANUFACTURING COMPANY, INC.,
Plaintiff,
vs.

CASE NO. 3:1l-cv-1058-J-20JBT

MILLENNIUM METALS, INC. &
L.V. THOMPSON, INC. d/b/a THOMPSON
ARCHITECTURAL METALS COMPANY,
Defendants.

==============================~/
ORDER
This cause is before this Court on Defendants' Motion to Stay Proceedings Pending Outcome
of Request for Reexamination ofPlaintitrs Patent (Doc. 21, filed February 28,2012) and Plaintiffs
response in opposition thereto (Doc. 22, filed March 13,2012).

I. Background
Plaintiff, Southeastern Metals Manufacturing Company, Inc., initiated this action on October
27,2011, by filing a single-count Complaint (Doc.l) for patent infringement against Defendants,
Millennium Metals, Inc. and L.V. Thompson, Inc. The claim relates to United States patent number
7,044,852 (the "Patent"), which concerns off-ridge roof ventilation technology.
In December 20 11, Defendants filed responsive pleadings, which raised affirmative defenses
and counterclaims, including assertions of patent invalidity based on newly found prior art. (Docs.
11 and 12). On February 6, 2012, the parties filed their Case Management Report (Doc. 19), which
advised the Court that Defendants intended to file a request for reexamination for the Patent by the
United States Patent and Trademark Office ("PTO"). On February 27, 2012, Defendant Millennium
did, in fact, file a request for ex parte reexamination for Plaintiffs Patent, pursuant to 35 U.S.C. §

302, on the ground that there are "substantial new questions of patentability in view of six prior art
references never disclosed to, or considered by, the [PTO] during the Patent's prosecution." (Doc.
21 at 3). On the same day, this Court entered its Case Management and Scheduling Order (Doc. 20),
which set a discovery deadline of May 10, 2013, and a jury trial for the term commencing on
November 4, 2013.
II. Discussion
In the instant motion, Defendants seek a stay of this action pending the outcome of the
request for ex parte reexamination of Plaintiffs Patent. Defendants argue that a stay will not unduly
prejudice Plaintiff, but, on the contrary, will narrow the issues in this case and lessen the burden of
litigation on the Court and the parties.

It is within the discretion of the district court to order a stay pending conclusion of a
reexamination

by the

PTO.

Freedom

Scientific,

Inc.

v.

GW Micro,

Inc.,

No.

8:08-cv-1365-T-33TBM, 2009 WL 2423095, at * 1 (M.D. Fla. July 29,2009); Lifewatch Servs., Inc.

v. Medicomp, Inc., No. 6:09-cv-1909-0rl-31 DAB, 20 I 0 WL 963202, at * 1 (M.D. Fla. Mar. 16,
2010). "'One purpose of the reexamination procedure is to eliminate trial of[the patent validity]
issue ... or to facilitate trial of that issue by providing the district court with the expert view of the
PTO (when a claim survives the reexamination proceeding).'" Alps South, LLC v. Ohio Willow Wood

Co., No. 8:09-CV-386-T-EAK, 2011 WL 899627, at *1 (M.D. Fla. Mar. 15,2011) (quoting Gould
v. Control Laser Corp., 705 F.2d 1340, 1342 (Fed. Cir. 1983» (bracketing in Alps South, LLC).
Thus, there is a liberal policy in favor of granting such stays. Baxa Corp. v. Forhealth Techs., Inc.,
Case No. 6:06-CV-353-0rl-19JGG, 2006 WL 4756455, at *1 (M.D. Fla. May 5, 2006) (citations
omitted).

However, "there is no per se rule requiring that patent cases be stayed pending

reexaminations because such a rule would invite parties to unilaterally derail litigation."
2

eCOMSYSTEMS, Inc. v. Shared MarkelingServices, Inc., No. 8: lO-cv-153 I-T-33AEP, 2011 WL
280942, at *2 (M.D. Fla. Jan. 26, 20 II).
In detennining whether to stay litigation pending the PTO's reexamination of a patent, courts
consider: "'(1) whether a stay will unduly prejudice or tactically disadvantage the non-moving party,
(2) whether a stay will simplify the issues and streamline the trial, and (3) whether a stay will reduce
the burden of litigation on the parties and on the court.'"

Freedom Scientific, Inc., 2009 WL

2423095, at *1 (quoting Baxa Corp. v. Forhealth Tech.')., Inc., 2006 WL 4756455, at *1).
Plaintiff claims that undue prejudice will result from the requested relief, as Defendants are
direct competitors and will gain market share during the potentially lengthy stay. However, no
evidence is offered in support of this assertion. Moreover, Plaintiffs argument is belied by the fact
that it waited over five years after learning of Defendants' allegedly infringing conduct to take legal
action. (See Doc. 22 at 5). Further, Plaintiff fails to explain how any prejudice resulting from
additional sales made during the stay cannot be remedied by monetary damages. Cf Freedom

Scientific, Inc., 2009 WL 2423095, at *2; Tomco Equip. Co. v. Se. Agri-Systems, Inc., 542 F. Supp.
2d 1303, 1308 (N.D. Ga. 2008).
With regard to whether a stay would simplify the issues and streamline the trial, Plaintiff
posits the ex parte reexamination "will mast likely not prevent this action from moving forward in
litigation." (Doc. 22 at 8) (emphasis added). Plaintiff is correct that Defendants are free to relitigate
the PTO's patent validity detenninations in this Court. Notwithstanding, at minimum, trial will be
facilitated by the availability of the PTO's expert views.

See Freedom Scientific. Inc., 2009 WL

2423095, at * I; Alps South, LLC, 2011 WL 899627, at *2. And, as noted by Defendants, a finding
of invalidity during the reexamination may result in a complete dismissal of this action. (Doc. 21
at 6).

3

J

Finally, this case is in its early stages. As of the date of the instant motion, neither party had
served or exchanged any discovery. (See Doc. 21 at 7; but cj' Doc. 22 (indicating that Plaintiff
served Defendants with initial discovery requests sometime prior to filing its opposition».
Accordingly, in addition to simplifying the action and providing expertise to the court and parties,
a stay pending reexamination may limit costs by focusing the issues before the parties engage in
significant discovery or litigation.

Therefore, it is ORDERED:
1. Defendants' Motion to Stay Proceedings Pending Outcome of Request for Reexamination
of Plaintiffs Patent (Doc. 21, tiled February 28, 2012) is GRANTED;
2. The Clerk of the Court is directed to ADMINISTRATIVEL Y CLOSE the file during
the pendency ofthe PTO's ex parle reexamination of Plaintiffs Patent. Defendants shall update this
Court on the reexamination proceedings every ninety (90) days.

DONE AND ORDERED at Jacksonville, Florida,

Copies to:
Dariush Keyhani, Esq.
Eric N. Assouline, Esq.
Lorri Lomnitzer, Esq.
Joseph J. Weissman, Esq.
Richard S. Vermut, Esq.

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this~ofMarch, 2012.