ELM, INC. v. VENMILL INDUSTRIES, INC.

Filing 52

OPINION & ORDER granting 45 Motion for Reconsideration, granting 32 MOTION to Stay, and the Order of this Court entered 6/18/15, Docket Entry 43 is Vacated. Signed by Judge Stanley R. Chesler on 8/6/15. (cm )

UNITED STATES DISTRICT COURT
DISTRICT OF NEW JERSEY
:
:
ELM, INC.,
:
Plaintiff, :
:
:
v.
:
:
VENMILL INDUSTRIES, INC.,
:
Defendant. :
:
:

Civil Action No. 14-4585 (SRC)
OPINION & ORDER

CHESLER, District Judge
This matter comes before the Court on the motion for reconsideration by Defendant
VenMill Industries, Inc. (“VenMill”) of the Opinion and Order of this Court filed June 18, 2015,
denying Defendant’s motion to stay this case pending resolution of the ex parte reexamination of
U.S. Patent No. 8,342,905 (the “‘905 patent.”) For the reasons stated below, the motion for
reconsideration will be granted.
A motion for reconsideration may be granted “if the party seeking reconsideration shows
at least one of the following grounds: (1) an intervening change in the controlling law; (2) the
availability of new evidence that was not available when the court granted the motion for
summary judgment; or (3) the need to correct a clear error of law or fact or to prevent manifest
injustice.” United States ex rel. Schumann v. AstraZeneca Pharms. L.P., 769 F.3d 837, 848-849
(3d Cir. 2014); L. CIV. R. 7.1(i).
VenMill had initially moved for reconsideration with the argument that there was a need
to correct a clear error of law. Subsequently, VenMill informed the Court that, on July 8, 2015,

1

the USPTO issued an office action which stated that claims 1, 2 and 4-12 of the ‘905 patent have
been reexamined and rejected. The office action states that the rejection is not final. VenMill
then asked that the Court reconsider its denial of the motion to stay on the basis of these changed
circumstances.
Plaintiff Elm, Inc. (“Elm”) responded by arguing that, despite this change in
circumstances, this Court had been correct when it found that VenMill had been engaging in
delaying tactics in this litigation. While this may be true, the unexpectedly quick response from
the USPTO to VenMill’s application for ex parte reexamination greatly changes the weight to be
given to that finding. Now that the USPTO has quickly reexamined the patent at issue and
rejected all the claims relevant to this litigation, a stay of this action is appropriate. Elm argues
that the USPTO rejection is not final and that it will contest the action, seeking further review
from the PTAB if necessary. This makes sense: given the change in circumstances, it is most
efficient to stay the present case in the district court and allow litigation of the dispute to proceed
within the USPTO. Once the USPTO has made a final determination about the validity of the
patent, the stay may be lifted and the litigation may continue in this Court. This is the most
efficient use of judicial resources.
For these reasons,
IT IS on this 6th day of August, 2015,
ORDERED that Defendant’s motion for reconsideration (Docket Entry No. 45) is
GRANTED, and the Order of this Court entered June 18, 2015 (Docket Entry No. 43) is hereby
VACATED; and it is further

2

ORDERED that Defendant’s motion to stay the action pending patent reexamination
(Docket Entry No. 32) is GRANTED and this case is hereby STAYED pending completion of
the patent reexamination process.
s/ Stanley R. Chesler
Stanley R. Chesler, U.S.D.J.

3