Golden et al v. Lim

Filing 35

ORDER EXTENDING TEMPORARY RESTRAINING ORDER re 10 Order. Signed by District Judge Patrick J. Duggan. (MOre)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MICHIGAN
SOUTHERN DIVISION
RICHARD GOLDEN and BEAK &
BUMPER, LLC,
Plaintiffs/Petitioners,
v.

Case No. 15-cv-10795

JANG H. LIM d/b/a DENTAL
USA, INC.,

Honorable Patrick J. Duggan

Defendant/Respondent.

ORDER EXTENDING TEMPORARY RESTRAINING ORDER
This civil action initially came before this Court on Plaintiffs Richard
Golden and Beak & Bumper, LLC’s Petitioner to Confirm Partial Final Arbitration
Award. (ECF No. 1.1) Plaintiffs filed a demand for arbitration with the American
Arbitration Association against Defendant Jang H. Lim for breach of a 2009
settlement agreement, which the parties entered after Plaintiffs filed a patent
infringement lawsuit against Defendant, as well as for willful patent infringement.
On February 26, 2015, the arbitrator issued a partial final award finding that
Defendant had breached several provisions of the 2009 settlement agreement, and
that Defendant willfully infringed Plaintiffs’ patent. As a result of these findings,
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This action, filed on March 4, 2015, was initially assigned to United States
District Court Judge Judith E. Levy, but was reassigned to the undersigned as a
companion case in an order dated March 10, 2015. (ECF No. 2.)

the arbitrator, among other things, permanently enjoined Defendant from selling its
infringing product.
Despite agreeing to binding arbitration in the 2009 settlement agreement,
Defendant initially refused to comply with the permanent injunction, selling the
infringing product at dental trade shows. Although Defendant has now stopped
selling the infringing product, this is not the result of voluntary compliance, but
rather the result of a temporary restraining order (“TRO”) issued by United States
District Judge Laurie J. Michelson on March 23, 2015. (ECF No. 10.)
The Court held a hearing on April 20, 2015, during which the parties
addressed Plaintiffs’ request for a preliminary injunction. By the time of this
hearing, Defendant had filed an answer to Plaintiffs’ petition to confirm as well as
a motion to vacate the arbitration award. (ECF Nos. 17, 19.) Further, as of April
16, 2015, Plaintiffs’ emergency motion for TRO and preliminary injunction had
been fully briefed. At the conclusion of the April 20, 2015 hearing, the parties
agreed to extend the TRO by sixty (60) days and Plaintiff deposited an additional
$10,000 to cover the increased the security.2 (ECF No. 21.) Without further action
of the Court, the TRO will dissolve on Friday, June 19, 2015.
Since the April 20, 2015 hearing, the parties have completed the briefing of
the petition to confirm as well as the motion to vacate the arbitration award. In

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The total amount that has been posted as bond to date is $30,000.
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addition to these briefs, several additional motions have been submitted by the
parties: (1) Defendant’s motion for leave to file a supplemental brief in support of
his motion to vacate the arbitration award (ECF No. 23); (2) Plaintiffs’
supplemental petition to confirm final arbitration award (ECF No. 27); and (3)
Defendant’s motion to dissolve the TRO and to stay the proceedings pending the
United States Patent and Trademark Office’s (“USPTO”) ex parte reexamination
proceeding (ECF No. 30). As of Wednesday, June 17, 2015, each of these motions
was fully briefed. Perhaps unsurprisingly given the litigious nature of these
proceedings to date, in responding to Plaintiffs’ supplemental petition to confirm
final arbitration award Defendant expressed an intention to file a motion to vacate
the May 8, 2015 arbitration award by August 8, 2015, which differs from the
partial final award issued in February 2015 to the extent it resolved the attorney’s
fees issue. (ECF No. 31, Pg ID 2663.) As with the other motions, the Court
presumes that this forthcoming motion will be fully briefed.
As the recitation of the procedural history of this lawsuit may suggest, two
realities make any action other than extending the current TRO improbable: the
sheer volume of motions filed (the last of which was fully briefed on June 17,
2015) and the fact that the Court cannot possibly rule on a motion that has not yet
been filed (i.e., Defendant’s forthcoming motion to vacate the May 8, 2015
arbitration award). For these reasons, the Court concludes that good cause exists to
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extend the TRO until the Court is able to resolve all of the pending motions in this
action.
IT IS SO ORDERED.
Dated: June 17, 2015
s/PATRICK J. DUGGAN
UNITED STATES DISTRICT JUDGE
Copies to:
Bridget M. Hathaway, Esq.
Peter W. Gowdey, Esq.
Dennis J. Levasseur, Esq.
Edward L. Bishop, Esq.
Nicholas S. Lee, Esq.

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