THERMOLIFE INTERNATIONAL, LLC v. PROSOURCE PERFORMANCE PRODUCTS et al

Filing 23

OPINION filed. Signed by Judge Freda L. Wolfson on 12/29/2015. (eaj)

UNITED STATES DISTRICT COURT
DISTRICT OF NEW JERSEY
___________________________________
:
Civil Action No. 15-2037 (FLW)(LHG)
THERMOLIFE INTERNATIONAL, LLC, :
:
OPINION
Plaintiff,
:
:
v.
:
:
PROSOURCE PERFORMANCE
:
PRODUCTS; VITAMIN SHOPPE, INC.; :
NETRITION, INC.; DPS NUTRITION;
:
SUPPLEMENT CENTRAL; PURUS
:
LABS, INC.; JOHN'S LONE STAR
:
DISTRIBUTION, INC.;
:
I’LLPUMPYOUUP.COM; Al
:
SUPPLEMENTS, INC.; WORLD CLASS :
NUTRITION; ALL STAR HEALTH;
:
MUSCLE & STRENGTH, LLC;
:
I-SUPPLEMENTS.COM; E-VITAMINS; :
SUPPZ INC.; LOCKOUT
:
SUPPLEMENTS; SUPPLEMENT
:
WAREHOUSE.COM, INC.; TF
:
SUPPLEMENTS; FITRX.COM, INC.;
:
VITACOST.COM; NUTRA HEALTH
:
SUPPLY; and PLANETARY NUTRITION, :
:
Defendants.
:
___________________________________ :
WOLFSON, United States District Judge:
This matter comes before the Court on a motion to stay or, in the alternative, dismiss
pursuant to Federal Rules of Civil Procedure 12(b)(2) and (6), filed by Defendants Vitamin
Shoppe, Inc.; Netrition, Inc.; DPS Nutrition; Supplement Central; Purus Labs, Inc.; John’s Lone
Star Distribution, Inc.; I’llPumpYouUp.com; Al Supplements, Inc.; All Star Health; Muscle &
Strength,

LLC;

I-Supplements.Com; E-Vitamins; Suppz Inc.;

Lockout Supplements;

SupplementWarehouse.com, Inc.; TF Supplements; Fitrx.Com, Inc.; Nutra Health Supply; and

1

Planetary Nutrition (collectively “Defendants”), 1 seeking (1) a stay of this matter while the United
States Patent and Trademark Office (“PTO”) reexamines the patents at issue in this matter or, in
the alternative; (2) dismissal of the Complaint filed by Plaintiff Thermolife International, Inc.
(“Thermolife” or “Plaintiff”) for failure to state a claim; and/or (3) dismissal of the Complaint for
want of personal jurisdiction over defendants I’llPumpYouUp.com; A1 Supplements, Inc.; All Star
Health; Muscle & Strength, LLC; I-Supplements.com; E-Vitamins; Suppz Inc.; Lockout
Supplements; SupplementWarehouse.com, Inc.; TF Supplements; Fitrx.com, Inc.; Nutra Health
Supply; and Planetary Nutrition (collectively “Foreign Defendants”).
For the following reasons, Defendants’ motion is granted in part and denied in part without
prejudice. Specifically, Defendants’ motion to dismiss for lack of personal jurisdiction over
Foreign Defendants is denied without prejudice, and the parties shall have sixty (60) days from the
date of the Order accompanying this Opinion to conduct jurisdictional discovery. Defendants’
motion to stay this matter is granted in part with respect to claims asserted against defendants
Vitamin Shoppe, Inc.; Netrition, Inc.; DPS Nutrition; Supplement Central; Purus Labs, Inc.; and
John’s Lone Star Distribution, Inc. Finally, Defendants’ motion to dismiss for failure to state a
claim is denied without prejudice.
I.

FACTUAL BACKGROUND AND PROCEDURAL HISTORY
The following facts are taken from the Complaint, except where noted. This is a patent

infringement case (with additional counts claiming violation of the Lanham Act, False Marking

1

On April 17, 2015, Plaintiff voluntarily dismissed its claims against defendants Prosource
Performance Products; World Class Nutrition; and Vitacost.com without prejudice.
2

Act, and common law trademark rights) concerning six patents 2 for amino acid and betaine
compounds owned by Thermolife:
•
•
•
•
•
•

Patent No. 8,466,187 (“‘187 Patent”);
Patent No. 8,569,368 (“‘368 Patent”);
Patent No. 8,569,369 (“‘369 Patent”);
Patent No. 8,952,047 (“‘047 Patent”);
Patent No. 8,952,046 (“‘046 Patent”); and
Patent No. 8,952,045 (“‘045 Patent”).

Compl. at ¶ 2 (citations omitted). Thermolife combines these compounds to create an exercise
supplement it calls “NO3-T.” Id. at ¶ 72. Thermolife alleges that Defendants sell dietary
supplement products under the brand names “NOXygen,” “Condense,” and “D-Pol” which
infringe on one or more claims of the patents in suit. Id. at ¶ 28.
At the time the Complaint was filed, the PTO had granted a reexamination request for the
‘187 Patent. Id. at ¶ 3. In July 2015, while the instant motion was pending, the PTO also granted
the reexamination request for the ‘046 Patent. Defendants’ Reply Br. Ex. A. Requests for
reexamination have been submitted to the PTO for the remaining four patents at issue in this
matter, but the record does not reflect whether these requests have been granted or rejected. See
Certification of Andrew S. Dallman, Esq., dated June 2, 2015 [hereinafter “Dallman Cert.”], at ¶
2.
In general, Plaintiff alleges that Defendants are infringing on its patents by manufacturing
and selling dietary supplements which include ingredients that infringe on the claims of one or
more of the patents in suit. Compl. ¶¶ 28, 36. On March 20, 2015, Plaintiff brought suit against

2

Thermolife also asserts that Defendants have infringed “U.S. Patent Nos. 8,034,836 and
8,455,531, which are currently in re-examination or review before the United States Patent and
Trademark Office.” Compl. ¶ 59 (these patents are referred to herein as the “‘836 Patent” and
“‘531 Patent,” respectively). Plaintiff has stated in its Complaint that “at the appropriate time,
Plaintiff intends to amend this Complaint to include allegations of infringement with respect to
those patents.” Id.
3

Defendants, alleging infringement of each of the above-listed patents (Count I-VI); false
advertising and false designation of origin, in violation of the Lanham Act, U.S.C. § 1125(a)(1)(A),
(B) (Count VII); common law trademark infringement (Count VIII); and violation of the False
Marking Statute, 35 U.S.C. § 292 (Count IX). On June 2, 2015, Defendants filed the instant motion
seeking a stay of the matter pending the PTO’s reexamination of the patents at issue or, in the
alternative, dismissal of the complaint.
II.

STANDARD OF REVIEW
A. Motion to Dismiss under Federal Rule of Civil Procedure 12(b)(2).
“A federal court sitting in New Jersey has jurisdiction over parties to the extent provided

under New Jersey state law.” Miller Yacht Sales, Inc. v. Smith, 384 F.3d 93, 96 (3d Cir. 2004).
“New Jersey’s long-arm statute provides for jurisdiction coextensive with the due process
requirements of the United States Constitution.” Id. (citing N.J. Ct. R. 4:4-4(c)).
A motion to dismiss for lack of personal jurisdiction is governed by Federal Rule of Civil
Procedure 12(b)(2). The plaintiff has the burden to prove facts sufficient to establish personal
jurisdiction by a preponderance of the evidence. Carteret Sav. Bank, FA v. Shushan, 954 F.2d
141, 146 (3d Cir. 1992); Pro Sports Inc. v. West, 639 F. Supp. 2d 475, 478 (D.N.J. 2009);
Ameripay, LLC v. Ameripay Payroll, Ltd., 334 F. Supp. 2d 629, 632 (D.N.J. 2004). In deciding
a Rule 12(b)(2), “when the court does not hold an evidentiary hearing on the motion to dismiss,
the plaintiff need only establish a prima facie case of personal jurisdiction and the plaintiff is
entitled to have its allegations taken as true and all factual disputes drawn in its favor.” Miller
Yacht Sales, 384 F.3d at 97; see also Toys “R” Us, Inc. v. Step Two, S.A., 318 F.3d 446, 457 (3d
Cir. 2003). However, although a plaintiff is entitled to have its allegations treated as true and
disputed facts construed in its favor, it still “‘bears the burden to prove, by a preponderance of the

4

evidence,’ that personal jurisdiction is proper.” Cerciello v. Canale, 563 F. Appx. 924, 925 n.1
(3d Cir. 2014) (quoting Carteret Sav. Bank, 954 F.2d at 146). “To meet that burden, [the plaintiff]
must ‘establish[] jurisdictional facts through sworn affidavits or other competent evidence.’” Id.
(citation omitted). “In other words, ‘bare pleadings alone’ are insufficient to withstand a motion
to dismiss for lack of personal jurisdiction.” Id. (citation omitted); see also Patterson by Patterson
v. F.B.I., 893 F.2d 595, 604 (3d Cir.) (holding that a plaintiff “must sustain its burden of proof in
establishing jurisdictional facts through sworn affidavits or other competent evidence; reliance on
the bare pleadings is not enough.”), cert denied, 498 U.S. 812 (1990). “Once the plaintiff has
shown minimum contacts, the burden shifts to the defendant, who must show that the assertion of
jurisdiction would be unreasonable.” Ameripay, 334 F. Supp. 2d at 633 (citing Mellon Bank (East)
PFSF, Nat’l Assoc. v. Farino, 960 F.2d 1217, 1221 (3d Cir. 1992)).
B.

Motion to Dismiss under Federal Rule of Civil Procedure 12(b)(6).

Federal Rule of Civil Procedure 12(b)(6) provides that a court may dismiss a claim “for
failure to state a claim upon which relief can be granted.” When reviewing a motion to dismiss,
courts must first separate the factual and legal elements of the claims, and accept all of the wellpleaded facts as true. See Fowler v. UPMC Shadyside, 578 F.3d 203, 210-11 (3d Cir. 2009). All
reasonable inferences must be made in the plaintiff’s favor. See In re Ins. Brokerage Antitrust
Litig., 618 F.3d 300, 314 (3d Cir. 2010). In order to survive a motion to dismiss, the plaintiff must
provide “enough facts to state a claim to relief that is plausible on its face.” Bell Atl. Corp. v.
Twombly, 550 U.S. 544, 570 (2007). This standard requires the plaintiff to show “more than a
sheer possibility that a defendant has acted unlawfully,” but does not create as high of a standard
as to be a “probability requirement.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009).

5

The Third Circuit has required a three-step analysis to meet the plausibility standard
mandated by Twombly and Iqbal. First, the court should “outline the elements a plaintiff must
plead to a state a claim for relief.” Bistrian v. Levi, 696 F.3d 352, 365 (3d Cir. 2012). Next, the
court should “peel away” legal conclusions that are not entitled to the assumption of truth. Id.; see
also Iqbal, 556 U.S. at 678-79 (“While legal conclusions can provide the framework of a
complaint, they must be supported by factual allegations.”). It is well-established that a proper
complaint “requires more than labels and conclusions, and a formulaic recitation of the elements
of a cause of action will not do.” Twombly, 550 U.S. at 555 (internal quotations and citations
omitted). Finally, the court should assume the veracity of all well-pled factual allegations, and
then “determine whether they plausibly give rise to an entitlement to relief.” Bistrian, 696 F.3d at
365 (quoting Iqbal, 556 U.S. at 679). A claim is facially plausible when there is sufficient factual
content to draw a “reasonable inference that the defendant is liable for the misconduct alleged.”
Iqbal, 556 U.S. at 678. The third step of the analysis is “a context-specific task that requires the
reviewing court to draw on its judicial experience and common sense.” Id. at 679.
Generally, when determining a motion under Rule 12(b)(6), the court may only consider
the complaint and its attached exhibits. However, while “a district court may not consider matters
extraneous to the pleadings, a document integral to or explicitly relied upon in the complaint may
be considered without converting the motion to dismiss into one for summary judgment.” Angstadt
v. Midd-West Sch. Dist., 377 F.3d 338, 342 (3d Cir. 2004) (citation omitted); see also In re
Burlington Coat Factory Sec. Litig., 114 F.3d 1410, 1426 (3d Cir. 1997).
III.

DISCUSSION
A.

Motion to Dismiss Foreign Defendants for want of Personal Jurisdiction

Before considering the other arguments of Defendants’ motion, the Court must first address
whether it has personal jurisdiction over the Foreign Defendants. Plaintiff does not argue that
6

Foreign Defendants are subject to general jurisdiction in New Jersey; instead, Plaintiff argues that
specific jurisdiction exists based on (1) the operation of “interactive” websites and (2) the “stream
of commerce” theory. 3 Pl’s Opp. Br. at 10-15. For the reasons outlined below, this Court cannot
determine from the record presented whether personal jurisdiction exists over Foreign Defendants.
Accordingly, the motion to dismiss for lack of personal jurisdiction is denied without prejudice so
that Plaintiff may conduct jurisdictional discovery as to whether Foreign Defendants sold any
allegedly infringing products to customers within the State of New Jersey through their websites.
A federal court sitting in diversity must follow a two-step inquiry to determine personal
jurisdiction: first, the court must apply the forum state’s long-arm statute and, second, the court
must apply the Due Process Clause of the United States Constitution. IMO Indus., Inc. v. Kiekert
AG, 155 F.3d 254, 258-59 (3d Cir. 1998). In this District, this inquiry is reduced to a single step
because New Jersey’s long-arm statute permits jurisdiction to the full extent of the Due Process
Clause. Miller Yacht Sales, 384 F.3d at 96; IMO Indus., 155 F.3d at 59. The Due Process Clause
allows a court to exercise personal jurisdiction over a defendant if the defendant has “certain
minimum contacts . . . such that the maintenance of the suit does not offend traditional notions of
fair play and substantial justice.” Int’l Shoe Co. v. Washington, 326 U.S. 310, 316 (1945).
In the absence of “continuous and systematic” contacts warranting the exercise of general
jurisdiction, a plaintiff may rely on “specific jurisdiction” where the cause of action is related to,
or arises out of, the defendant’s contacts with the forum. IMO Indus., 155 F.3d at 259 (citing
Helicopteros, 466 U.S. at 414 n.8). In the context of an infringement suit, the Court of Appeals

3

Because the parties will be allowed to conduct jurisdictional discovery with respect to
whether personal jurisdiction exists based on Foreign Defendants’ operation of the websites at
issue, the Court will not address Plaintiff’s argument that personal jurisdiction exists under the
stream of commerce theory at this time. If necessary, the Court will address that argument after
the conclusion of jurisdictional discovery.
7

for the Federal Circuit applies a three-prong test to determine whether the exercise of specific
personal jurisdiction satisfies due process in a patent case. Specifically, the existence of specific
jurisdiction depends on whether:
(1) the defendant purposefully directed its activities at residents of the forum; (2)
the claim arises out of or relates to the defendant’s activities with the forum; and
(3) assertion of personal jurisdiction is reasonable and fair.
Synthes (U.S.A.) v. G.M. Dos Reis Jr. Ind. Com de Equip. Medico, 563 F.3d 1285, 1291 (Fed. Cir.
2009); see also O’Connor v. Sandy Lane Hotel Co., 496 F.3d 312, 317 (3d Cir. 2007); Oticon, Inc.
v. Sebotek Hearing Sys., LLC, 865 F. Supp. 2d 501, 510 (D.N.J. 2011). “The first two factors
correspond with the ‘minimum contacts’ prong of the Supreme Court’s International Shoe
analysis, and the third factor corresponds with the ‘fair play and substantial justice’ prong of the
analysis.” Inamed Corp. v. Kuzmak, 249 F.3d 1356, 1360 (Fed. Cir. 2001).
Here, Plaintiff argues that this Court has personal jurisdiction over Foreign Defendants
under “website-based” jurisdiction, relying on the sliding-scale test set forth in Zippo
Manufacturing Co. v. Zippo Dot Com, Inc., 952 F. Supp. 1119 (W.D. Pa. 1997). “Although the
Federal Circuit has not explicitly embraced the so-called Zippo Manufacturing test, . . . it has
indicated that the interactivity of a web-site is relevant to the personal jurisdiction analysis.
M2M Solutions LLC v. Simcom Wireless Solutions Co., Ltd., 935 F. Supp. 2d 740, 745 n.3 (D. Del.
2013) (citing Trintec Indus., Inc. v. Pedre Promotional Prods., Inc., 395 F.3d 1275, 1281 (Fed.
Cir. 2005)) (citations omitted). Courts routinely refer to Zippo test to analyze personal jurisdiction
based on the operation of a website. See, e.g., Ackourey v. Sonellas Custom Tailors, 573 F. Appx.
208, 211 (3d Cir. 2014) (referring to Zippo as the “seminal authority regarding personal
jurisdiction based upon the operation of an Internet web site.”) (citing Toys “R” Us, Inc. v. Step
Two, S.A., 318 F.3d 446, 452 (3d Cir. 2003)). The Third Circuit has explained:

8

When analyzing Internet commerce cases, “the likelihood that personal jurisdiction
can be constitutionally exercised is directly proportionate to the nature and quality
of commercial activity that an entity conducts over the Internet.” Zippo, 952 F.
Supp. at 1124. This sliding scale ranges from situations where a defendant uses an
interactive commercial website to actively transact business with residents of the
forum state (personal jurisdiction exists) to situations where a passive website
merely provides information that is accessible to users in the forum state (personal
jurisdiction does not exist). Id. To determine whether personal jurisdiction exists
for situations between these extremes, we examine “the level of interactivity and
commercial nature of the exchange of information that occurs on the Web site.”
Id.; see Toys “R” Us, 318 F.3d at 452.
Ackourey, 573 F. Appx. at 211-12.
While a web site may be viewed in a particular forum, that fact alone does not establish
personal jurisdiction in that forum. See Toys “R” Us, 318 F.3d at 454. “[S]omething more” must
be shown to prove that the defendant “purposefully availed itself of conducting activity in the
forum state.” Id. Plaintiff argues that Foreign Defendants’ websites are interactive and targeted
at New Jersey because New Jersey appears as a shipping option in drop-down menus on the
websites, or is allowed to be manually entered as a shipping option:
Thermolife has . . . systemically evaluated each foreign defendant’s website from
New Jersey and determined their interactive features, confirmed that the accused
products are available for online purchase, and further confirmed the availability of
shipping the accused products to New Jersey. . . . Each of the websites . . . allow
New Jersey customers to make purchases through the site and ship products to New
Jersey, and many order pages either automatically include “New Jersey” as an
option in a “State” drop-down menu for shipping information or else permit a
customer to enter a New Jersey address.
Pl. Opp. Br. at 13. However, the mere inclusion of the forum in a website’s drop-down menu,
without evidence of sales to residents of the forum, is insufficient to support the conclusion that
Foreign Defendants specifically targeted that forum with their websites. See Hershey Co. v.
Pagosa Candy Co., No. 07-1363, 2008 U.S. Dist. LEXIS 29410, at *20-21 (M.D. Pa. Apr. 10,
2008). Cf. Zippo, 952 F. Supp. at 1126 (finding personal jurisdiction existed where defendant used
website to establish accounts with approximately 3,000 forum residents, showing “purposeful
9

availment” because the defendants “repeatedly and consciously chose to process” the forum’s
customers’ orders, knowing that doing so was “a conscious choice to conduct business with the
residents of the forum state.”).
Indeed, such evidence is not only vital to the first prong of the specific jurisdiction analysis,
purposeful availment, but is also necessary for the second prong as well: relatedness. To establish
that this Court has personal jurisdiction over Foreign Defendants based on the websites at issue,
Plaintiff must not only show that Foreign Defendants made sales to forum residents, but that they
specifically made sales of the allegedly infringing products to forum residents through their
commercially interactive websites. See Ackourey, 573 F. Appx. at 212 (affirming dismissal for
lack of personal jurisdiction based on the absence of evidence that forum residents utilized or
accessed defendant’s interactive website to schedule appointments); R.Q.C. Ltd. v. JKM Enters.,
No. 13-cv-307, 2014 U.S. Dist. LEXIS 133225, at *13-14 (W.D. Pa. Sept. 23, 2014).
“[W]here issues arise as to jurisdiction or venue, discovery is available to ascertain the
facts bearing on such issues.” Oppenheimer Fund, Inc. v. Sanders, 437 U.S. 340, 351 n.13 (1978);
Metcalfe v. Renaissance Marine, Inc., 566 F.3d 324, 336 (3d Cir. 2009). If “the plaintiff’s claim
is not clearly frivolous [as to the basis for personal jurisdiction], the district court should ordinarily
allow discovery on jurisdiction in order to aid the plaintiff in discharging that burden.” Metcalfe,
566 F.3d at 336 (citing Compagnie Des Bauxites de Guinee v. L’Union Atlantique S.A.
D’Assurances, 723 F.2d 357, 362 (3d Cir. 1983)).

“[J]urisdictional discovery particularly

appropriate where the defendant is a corporation.” Id. Therefore, Plaintiff will be permitted to
conduct jurisdictional discovery to ascertain whether Foreign Defendants sold allegedly infringing
products to forum residents through their websites.
B.

Motion to Stay

10

“The decision to stay a patent case in which a reexamination by the PTO has been
requested is within the discretion of the district court.” ICI Uniqema, Inc. v. Kobo Prods., Inc.,
No. 06-2943, 2009 U.S. Dist. LEXIS 108421, at *2 (D.N.J. Nov. 20, 2009) (citing Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1426-27 (Fed. Cir. 1988)); see also P&G v. Kraft Foods Global, Inc., 549
F.3d 842, 849 (Fed. Cir. 2008); Gould v. Control Laser Corp., 705 F.2d 1340, 1341 (Fed. Cir.),
cert. denied, 464 U.S. 935 (1983). “The party seeking a stay of civil litigation bears the burden to
show that the stay would be appropriate.” Mondis Tech. LTD v. LG Elecs., Inc., No. 15-4431,
2015 U.S. Dist. LEXIS 152906, at *13 (D.N.J. Nov. 12, 2015) (citing Landis v. N. Am. Co., 299
U.S. 248, 255 (1936)).
Courts consider the following three factors in determining whether to stay a case
pending reexamination of a patent: “(1) whether a stay would unduly prejudice or
present a clear tactical disadvantage to the non-moving party; (2) whether a stay
will simplify the issues and the trial of the case; and (3) whether discovery is
complete and a trial date has been set.”
Id. at *16 (quoting Stryker Trauma S.A. v. Synthes (USA), No. 01-3879, 2008 U.S. Dist. LEXIS
23955, at *4 (D.N.J. Mar. 28, 2008)); ICI Uniqema, 2009 U.S. Dist. LEXIS 108421 at *3-4; see
also LMT Mercer Grp., Inc. v. McFarland Cascade Holdings, Inc., No. 11-0539, 2011 U.S. Dist.
LEXIS 55553, at *25-26 (D.N.J. May 24, 2011) (citing cases).

With respect to the remaining

defendants’ motion to stay, the Court finds that the balance of these factors weigh in favor of stay,
as discussed in more detail below.
The first factor for consideration in analyzing a stay request is “whether a stay would
unduly prejudice or present a clear tactical disadvantage to the non-moving party.” Mondis Tech,
2015 U.S. Dist. LEXIS 152906 at *16 (citation omitted).

“The court weighs whether

disadvantages from delay are outweighed by advantages from allowing the PTO to complete the
reexamination process before further consideration of the district court case.” Id. (citation

11

omitted). Here, Defendants argue that Plaintiff will suffer no prejudice based on the fact that its
request has been made in the early stages of litigation. In opposition, Plaintiff argues that a stay
will prejudice it based on (1) the delay that the reexamination process will cause and (2) the impact
of Defendants’ ability to continue to sell its competing products in the marketplace. Plaintiff’s
first objection, by itself, is not valid, as courts have repeatedly recognized that “[t]he delay inherent
to the reexamination process does not constitute, by itself, undue prejudice.” Id. at *16 (quoting
CCP Sys. AG v. Samsung Elecs. Corp., No. 09-4354, 2010 U.S. Dist. LEXIS 128943, at *7 (D.N.J.
Dec. 7, 2010)). However, where, as here, the parties are in direct competition, the delay of the
reexamination process would cause Plaintiff prejudice. See LG Elecs. U.S.A. v. Whirlpool Corp.,
No. 09-5142, 2011 U.S. Dist. LEXIS 11488, at *2-3 (D.N.J. Feb. 4, 2011) (finding first factor
weighed against stay where “[t]he parties are direct competitors and this delay would cause
Plaintiffs to lose substantial profits as well as goodwill in the market. The goodwill lost during the
reexamination proceedings could be difficult to measure and thus difficult to compensate fully
with money damages after trial.”); Cordis Corp. v. Abbott Labs., No.’s 07-2265, 07-2477, 072728, 07-5636, 2009 U.S. Dist. LEXIS 131892, *4-5 (D.N.J. Feb. 3, 2009). The Court finds that
because the parties are direct competitors, a stay of this litigation would result in prejudice to
Plaintiff and, therefore, this factor weighs against staying litigation pending the reexamination of
the ‘046 Patent.
The second factor, whether a stay will simplify the issues in question and trial of the case,
weighs in favor of staying this matter pending reexamination by the PTO. “Reexamination
proceedings may simplify litigation by the ‘cancellation, clarification, or limitation of claims’ that
may eliminate the court’s need to litigate whether [a defendant] has infringed one or more of the
asserted claims.” Mondis Tech, 2015 U.S. Dist. LEXIS 152906 at *19 (quoting Ethicon, 849 F.2d

12

at 1428).

Indeed, courts have noted that where one or more patents at issue are under

reexamination,
[A] stay could “prevent resources from being expended on invalid or amended
claims.” And “even if the reexamination [does] not lead to claim amendment or
cancellation, it could still provide valuable analysis to the district court.” The Court
need not find that all issues be eliminated by a reexamination to grant a stay; the
fact that the PTO’s reexaminations may create simplification in the case is a
sufficient reason to support granting a stay.”
Id. at *19-20 (citations omitted). In this matter, at least one of the patents, the ‘046 Patent, is
underdoing reexamination by the PTO on all of its claims. 4 See Defs.’ Reply Br., Ex. A, at 12
(granting reexamination on all 14 claims of the ‘046 Patent). Staying this action will allow the
court to review the full prosecution history of the ‘046 Patent, and the PTO’s analysis of prior art
and the scope of the asserted claims of the ‘046 Patent. Moreover, the PTO may dispose of one or
more of the claims raised in the ‘046 Patent, simplifying this case by reducing the number of
patents at issue.
Finally, the third factor is uncontested and weighs in favor of stay, as discovery has not yet
been completed and no trial date has been set. See Mondis Tech, 2015 U.S. Dist. LEXIS 152906
at *21.
Accordingly, because the balance of the relevant factors weighs in favor of a stay, the Court
will grant in part Defendant’s motion to stay this matter pending the outcome of the PTO’s
reexamination of the ‘046 Patent with respect to defendants Vitamin Shoppe, Inc.; Netrition, Inc.;
DPS Nutrition; Supplement Central; Purus Labs, Inc.; and John’s Lone Star Distribution, Inc.
C.

Motion to Dismiss Complaint for Failure to State a Claim.

4

Plaintiff alleges in its Complaint that the ‘187 Patent is also undergoing reexamination
by the PTO, “but not with respect to the claims that are asserted in this matter against Defendants.”
Compl. ¶ 3. Neither Plaintiff nor Defendants have provided this Court with the Order granting
reexamination of the ‘187 Patent, and Defendant has not contradicted Plaintiff’s assertion that the
PTO’s reexamination of the ‘187 Patent is limited to claims that are not at issue in this matter.
13

Because the Court cannot rule yet on whether personal jurisdiction exists over Foreign
Defendants, and has further determined that a stay is appropriate for the claims asserted against
the remaining defendants pending the PTO’s reexamination of the ‘046 Patent, Defendant’s motion
to dismiss for failure to state a claim is denied without prejudice.
IV.

CONCLUSION
For the foregoing reasons, Defendants’ motion is granted in part and denied in part without

prejudice.
Dated: December 29, 2015
/s/ The Honorable Freda L. Wolfson
United States District Judge

14