Lighting Science Group Corporation v. Nicor, Inc.

Filing 98

ORDER granting 86 motion to stay. On or before Friday, June 23, 2017, and every 45 days thereafter, the parties to the Related Actions are DIRECTED to provide written notice to the Court concerning: (a) the status of the Inter Partes Proceedings; (2) any settlement discussions in any Related Case; and (3) whether assistance from this Court is desired to facilitate settlement discussions. Signed by Judge Roy B. Dalton, Jr. on 5/9/2017. (VMF)

UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
ORLANDO DIVISION
LIGHTING SCIENCE GROUP
CORPORATION,
Plaintiff/Counter-Defendant,
v.

Case No. 6:16-cv-413-Orl-37GJK

NICOR, INC.,
Defendant/Counter-Claimant.
LIGHTING SCIENCE GROUP
CORPORATION,
Plaintiff/Counter-Defendant,
v.

Case No. 6:16-cv-1087-Orl-37GJK

AMERICAN DE ROSA LAMPARTS,
LLC,
Defendant/Counter-Claimant.
LIGHTING SCIENCE GROUP
CORPORATION,
v.

Plaintiff,

Case No. 6:16-cv-1255-Orl-37GJK

TECHNICAL CONSUMER
PRODUCTS, INC.,
Defendant.

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LIGHTING SCIENCE GROUP
CORPORATION,
Plaintiff/Counter-Defendant,
v.

Case No. 6:16-cv-1256-Orl-37GJK

SATCO PRODUCTS, INC.,
Defendant/Counter-Claimant.
LIGHTING SCIENCE GROUP
CORPORATION,
Plaintiff,
v.

Case No. 6:16-cv-1321-Orl-37GJK

AMAX LIGHTING,
Defendant.
ORDER
The five patent infringement actions identified above (“Related Actions”)—each
initiated seriatim by Plaintiff Lighting Science Group Corporation (“Lighting
Science”)—are before the Court upon consideration of the following identical documents
filed in each Related Action: (1) Defendants’ Motions to Stay Litigation Pending Inter
Partes Review and Incorporated Memorandum in Support (“Stay Motions”), filed
February 27, 2017; 1 (2) Plaintiff’s Memoranda in Opposition to Defendants’ Motions to

(Lighting Sci. v. Nicor, Inc., No. 6:16-cv-413-Orl-37GJK (“Nicor Action”), at
Doc. 86; Lighting Sci. v. Am. De Rosa Lamparts, LLC, No. 6:16-cv-1087-Orl-37GJK (“ADRL
Action”), at Doc. 36; Lighting Sci. v. Tech. Consumer Prods., Inc., No. 6:16-cv-1255-Orl1

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Stay Litigation (“Responses”), filed March 10, 2017; 2 (3) Defendants’ Replies in Support
of Motion to Stay Litigation Pending Inter Partes Review and Incorporated Memoranda
in Support (“Replies”), filed March 27, 2017; 3 and (4) Plaintiff’s Surreplies in Support of
Opposition to Motion to Stay Litigation Pending Inter Partes Review and Incorporated
Memorandum of Law in Opposition (“Surreplies”), filed May 1, 2017. 4
I.

BACKGROUND

In these Related Actions, Lighting Science claims that its competitors in the LED
lighting market—Nicor, Inc. (“Nicor”), American De Rosa Lamparts, LLC (“ADRL”),
Technical Consumer Products, Inc. (“TCPI”), Satco Products, Inc. (“Satco”), and Amax
Lighting (“Amax”)—are infringing certain claims (“Asserted Claims”) of three of
Plaintiff’s

registered

patents

(“Patents-in-Suit”)—U.S. Patent

No. 8,201,968

(“‘968 Patent”), U.S. Patent No. 8,672,518 (“‘518 Patent”), and U.S. Patent No. 8,967,844
(“‘844 Patent”). 5

37GJK (“TCPI Action”), at Doc. 49; Lighting Sci. v. Satco Prods., Inc., No. 6:16-cv-1256Orl-37GJK (“Satco Action”), at Doc. 44; Lighting Sci. v. Amax Lighting, No. 6:16-cv-1321Orl-37GJK (“Amax Action”), at Doc. 49.)
2(Nicor Action, at Doc. 87; ADRL Action, at Doc. 37; TCPI Action, at Doc. 51, Satco
Action, at Doc. 45; Amax Action, at Doc. 48.)
3(Nicor Action, at Doc. 91; ADRL Action, at Doc. 39; TCPI Action, at Doc. 55, Satco
Action, at Doc. 48; Amax Action, at Doc. 52.)
4(Nicor Action, at Doc. 97; ADRL Action, at Doc. 44; TCPI Action, at Doc. 61, Satco
Action, at Doc. 52; Amax Action, at Doc. 57.)
5(Nicor Action, at Doc. 45 (Amended Complaint); ADRL Action, at Doc. 1
(Complaint); TCPI Action, at Doc. 29 (Amended Complaint), Satco Action, at Doc. 11
(Amended Complaint); Amax Action, at Doc. 37 (Amended Complaint).)
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By asserting counterclaims and affirmative defenses in these actions, 6 and by filing
petitions with the Patent Trial and Appeal Board (“PTAB”) on April 17, 2017
(“Petitions”), for inter partes review (“IPR”) in accordance with new procedures set forth
in the Leahy-Smith America Invents Act (“AIA”), 35 U.S.C. §§ 311–319, each of the
Defendants have challenged the validity of the Asserted Claims. 7 Based on their Petitions,
and the fact that the PTAB previously instituted IPRs with respect to claims of the ‘968
and ‘844 Patents, 8 the Defendants request that the Court stay these proceedings pending
further action by the PTAB. (See supra nn.1, 3.) Lighting Science opposes the Stay Motions
(see supra nn.2, 4), and the matter is ripe for adjudication.
II.

DISCUSSION

Under the AIA, IPR presents “a new system for reviewing issued patents,
providing for stays of district court proceedings, and estoppels in tribunals, based on”
expedited decisions of the Patent and Trademark Office (“PTO”). 9 See SAD Inst., Inc. v.

Nicor Action, at Doc. 48; ADRL Action, at Doc. 21; TCPI Action, at Doc. 36,
Satco Action, at Doc. 22, pp. 14–16; Amax Action, at Doc. 39.)
7(See Nicor Action, Doc. 93; TCPI Action, Doc. 57; Amax Action, Doc. 54.)
8Based on petitions filed by prior Defendants in another Related Case—Lighting
Science v. Sea Gull Lighting Products, LLC, No. 6:16-cv-338-Orl-37GJK (“SGLP Action”)—
on February 6, 2017, the PTAB instituted IPRs with respect to claims of the ‘968 and ‘844
Patents (“SGLP IPRs”). (See Dismissed SGLP Action, Doc. 56.) After the Court dismissed
the SGLP Action on March 8, 2017, in accordance with the parties’ settlement, the SGLP
IPRs were also dismissed.
9The new adjudicative IPR process is intended to improve the non-adjudicative
post-issue examination process by: (1) “reducing to 12 months the time the PTO spends
reviewing validity, from the previous reexamination average of 36.2 months”; and
(2) “minimizing duplicative efforts by increasing coordination between district court
litigation” and the IPR processes. See Andersons, Inc. v. Enviro Granulation, LLC,
No. 8:13-cv-3004-T-33MAP, 2014 WL 4059886, at *1 (M.D. Fla. 2014) (granting motion to
stay).
6(See

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ComplementSoft, LLC, 825 F.3d 1341, 1353–54 (Fed. Cir. 2016) (Newman, J., concurring in
part & dissenting in part). In the two-stage IPR proceeding:
(1)

the PTAB first reviews the IPR petition and any
preliminary response, and makes its decision—which
is not subject to appeal—whether “there is a reasonable
likelihood that the petitioner would prevail with
respect to at least 1 of the claims challenged in the
petition” based on prior art (see Synopsys, Inc. v. Mentor
Graphics Corp., 814 F.3d 1309, 1314 (Fed. Cir. 2016)
(quoting 35 U.S.C. § 314(a))); and

(2)

the PTAB then conducts the IPR and—based on a
fulsome administrative record—issues a final written
decision with respect to “any patent claim challenged
by the petitioner” (see id. (quoting 35 U.S.C. § 318(a)).

When IPRs are sought, the decision to stay related civil patent infringement
litigation is within the sound discretion of the district court. See Auto. Mfg. Sys., Inc. v.
Primera Tech., Inc., No. 6:12-cv-1727-Orl-37DAB, 2012 WL 6133763, at *1 (M.D. Fla.
Nov. 21, 2013). Non-exclusive factors pertinent to the exercise of such discretion include:
(1) the procedural posture of the litigation, including whether discovery is complete and
a trial date is set (“Procedural Posture Factor”); (2) whether the stay will simplify issues
in the dispute between the litigants (“Simplification Factor”); and (3) whether the stay
will unduly prejudice or present a clear tactical disadvantage to the nonmoving party
(“Prejudice Factor”). See id. 10

See also Rothschild Storage Retrieval Innovations, LLC v. Motorola Mobility, LLC,
Case No. 14-22659-CIV-Scola, 2015 WL 12715618, at *1 (S.D. Fla. May 11, 2015) (granting
stay); CANVS Corp. v. Nivisys, No. 2:14-cv-99-FtM-38DNF, LLC, 2014 WL 6883123, at *2
(M.D. Fla. Dec. 5, 2014) (granting stay).
10

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Here, the totality of the circumstances weigh in favor of entering a stay. First, the
procedural posture of the Related Actions is not advanced. The oldest Related Action was
filed on March 10, 2016 (see Nicor Action, at Doc. 1), the newest was filed on July 22, 2016
(see Amax Action, at Doc. 1), and—due the amendment of pleadings, an initial lack of
diligence, 11 various requests for extensions of time, and the necessity of consolidating the
Related Actions to conserve resources—discovery is far from complete, the Court has not
conducted a claim construction hearing, the claim construction issues are not fully
briefed, and the trial dates are not yet set. 12 Thus, the Procedural Posture Factor weighs
in favor of entering a stay.
Given the pending invalidity counterclaims and affirmative defenses (see supra
note 6), there is little doubt that input from the PTO will facilitate the resolution of these
proceedings. Hence the Simplification Factor also weighs strongly in favor of entering a
stay. See Primera Tech., 2013 WL 6133763, at *4 (noting the varied benefits that may result
from IPRs even when no claims are invalidated).
Finally, the Prejudice Factor weighs somewhat against entry of a stay, but it is not
determinative here because Lighting Science’s litigation choices do not demonstrate any
particular sense of urgency. See Andersons, 2014 WL 4059886, at *3 (rejecting argument
that stay was inappropriate because the parties were competitors); see also VirtualAgility
Inc. v. Salesforce.com, Inc., 759 F.3d 1307, 1318–19 (Fed. Cir. 2014) (reversing denial of stay

Action, at Doc. 87; ADRL Action, at Doc. 37; TCPI Action, at Doc. 51, Satco
Action, at Doc. 45; Amax Action, at Doc. 48.)
12(See e.g., Nicor Action, at Docs. 81, 83, 84.)
11(Nicor

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where district court gave undue weight to parties’ status as competitors). Further, the
new expedited procedures provided under the AIA should ameliorate any risk of
prejudice. See Primera Tech., 2013 WL 6133763, at *3.
III.

CONCLUSION

Accordingly, it is ORDERED AND ADJUDGED that:
(1)

Defendant Nicor, Inc.’s Motion to Stay Litigation Pending Inter Partes
Review and Incorporated Memorandum in Support filed in the Nicor
Action (Doc. 86) is GRANTED.

(2)

Defendant American De Rosa Lamparts, Inc.’s Motion to Stay Litigation
Pending Inter Partes Review and Incorporated Memorandum in Support
filed in the ADRL Action (Doc. 36) is GRANTED.

(3)

Defendant Technical Consumer Products, Inc.’s Motion to Stay Litigation
Pending Inter Partes Review and Incorporated Memorandum in Support
filed in the TCPI Action (Doc. 49) is GRANTED.

(4)

Defendant Satco Products, Inc.’s Motion to Stay Litigation Pending Inter
Partes Review and Incorporated Memorandum in Support filed in the Satco
Action (Doc. 44) is GRANTED.

(5)

Defendant Amax Lighting’s Motion to Stay Litigation Pending Inter Partes
Review and Incorporated Memorandum in Support filed in the AMAX
Action (Doc. 47) is GRANTED.

(6)

The Related Actions are hereby STAYED pending resolution of the
Petitions for Inter Partes Review referenced above.
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(7)

The Clerk is DIRECTED to vacate all existing deadlines and TERMINATE
all pending motions.

(8)

On or before Friday, June 23, 2017, and every 45 days thereafter, the parties
to the Related Actions are DIRECTED to provide written notice to the
Court concerning: (a) the status of the Inter Partes Proceedings; (2) any
settlement discussions in any Related Case; and (3) whether assistance from
this Court is desired to facilitate settlement discussions.

DONE AND ORDERED in Orlando, Florida, this 9th day of May, 2017.

Copies to:
Counsel of Record

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