Cequent Performance Products, Inc. v. Hopkins Manufacturing Corporation et al

Filing 40

ORDER Granting Plaintiff Cequent Performance Products, Inc.'s 37 Motion to Lift Stay and Lifting Stay of Proceedings. Signed by District Judge Matthew F. Leitman. (HMon)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MICHIGAN
SOUTHERN DIVISION
CEQUENT PERFORMANCE
PRODUCTS, INC.,
Plaintiff,

Case No. 13-cv-15293
Hon. Matthew F. Leitman

v.
HOPKINS MANUFACTURING
CORPORATION et al..,
Defendants.
_________________________________/
ORDER GRANTING PLAINTIFF CEQUENT PERFORMANCE
PRODUCTS, INC.’S MOTION TO LIFT STAY (ECF #37) AND
LIFTING STAY OF PROCEEDINGS
On April 1, 2015, the Court stayed all proceedings in this action given
pending inter partes review proceedings before the United States Patent and
Trademark Office (the “USPTO”). (See ECF #36.) The Court issued the stay
because the USPTO proceedings had the potential to resolve the validity of most of
the claims in the patents-in-suit. (See id.)
The USPTO has now refused to institute inter partes review with respect to
two of the patents and agreed to hold inter partes review proceedings on only a
limited number of claims related to the third patent. Plaintiff Cequent Performance
Products, Inc. (“Cequent”) argues that based on the USPTO’s decisions, the Court
should lift the stay in this action (the “Motion”). (See ECF #37.) The issues in the
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Motion have been adequately presented in the parties’ briefs and oral argument is
therefore unnecessary. See Local Rule 7.1(f)(2). For the reasons set forth below,
the Court agrees with Cequent, GRANTS the Motion, and LIFTS the stay of
proceedings.
In the Motion, Cequent asserts that the Court should dissolve the stay
because the USPTO entirely refused to institute inter partes review proceedings on
two of the patents (the ‘780 and ‘352 Patents) and refused to institute an inter
partes review proceeding on nine claims related to the third patent (the ‘993
Patent). (See Mot., ECF #37 at 2-3, Pg. ID 725-726.) In response, Defendant
Hopkins Manufacturing Corporation (“Hopkins”) argues that lifting the stay is
premature because it has requested rehearing of the USPTO’s decision with respect
to the ‘352 and ‘993 Patents. (See Response Br., ECF #38 at 3, Pg. ID 793.)
Hopkins also contends that the Court should maintain the stay because the USPTO
has decided to institute inter partes review on 12 claims of the ‘993 Patent. (See
id. at 5-6, Pg. ID 795-796.) Hopkins insists that the USPTO’s decision on the ‘993
Patent could still simplify the issues in this action. (See id.)
The Court concludes that its reason for instituting the stay – the potential
that the inter partes review proceedings could materially simplify the dispute
currently before the Court – no longer exists. First, after the parties submitted their
briefs on the Motion, the USPTO denied Hopkins’ requests for rehearing with
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respect to the ‘352 and ‘993 Patents. Therefore, there is no chance that inter partes
review will simplify these proceedings with respect to those patents. Second, the
single inter partes review proceeding still pending concerns only 12 of the 48
asserted patent claims as to the ‘993 Patent. The discovery in this action will likely
be substantially be the same no matter the outcome in the pending inter partes
review of the ‘993 Patent because the same brake controllers are accused of
infringing the ‘780 and ‘352 Patents. Moreover, the USPTO will almost certainly
make its final decision in the pending inter partes review proceeding before this
Court decides dispositive motions, thereby preventing a waste of judicial
resources. Accordingly, the Court does not believe that the inter partes review
with respect to the ‘993 Patent will materially simplify these proceedings.
CONCLUSION
After carefully considering the parties’ positions, IT IS HEREBY
ORDERED that Cequent’s “Motion to Lift Stay (ECF #37) is GRANTED. IT IS
FURTHER ORDERED that within 10 days of this Order, the parties shall contact
the Court’s Special Master Christopher G. Darrow to discuss a schedule for this
case.
s/Matthew F. Leitman
MATTHEW F. LEITMAN
UNITED STATES DISTRICT JUDGE
Dated: November 13, 2015

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I hereby certify that a copy of the foregoing document was served upon the
parties and/or counsel of record on November 13, 2015, by electronic means
and/or ordinary mail.
s/Holly A. Monda
Case Manager
[phone]

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