America's Collectibles Network, Inc. v. The Genuine Gemstone Company Limited

Filing 103

Memorandum Opinion and Order, Genuine Gemstone's motion for a partial stay 29 is Granted. The infringement and validity claims will be Stayed pending completion of the CBM review. The ownership claims, however, will proceed. Signed by District Judge Pamela L Reeves on 11/7/14. (ADA)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF TENNESSEE
AT KNOXVILLE

America’s Collectibles Network, Inc.
Plaintiff/Counterdefendant,
v.
The Genuine Gemstone Company, Ltd.,
Defendant/Counterplaintiff.

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No.: 3:13-CV-334-PLR-HBG

Memorandum Opinion and Order
The defendant in this patent infringement case has moved for a partial stay pending a
Covered Business Method (“CBM”) review by the United States Patent Office, which will
consider whether the claims of the sole patent at issue (the “‘211 Patent”) are directed to
ineligible subject matter under 35 U.S.C. § 101. [R. 28]. The CBM review was initiated by the
Jewelry Channel, who is a defendant in another patent infringement lawsuit filed by America’s
Collectibles Network (“ACN”). The Genuine Gemstone Company is not a party to the CBM
review.
Genuine Gemstone contends that it is the true owner of the ‘211 Patent—not ACN—and
it has filed a motion for summary judgment regarding ownership of the ‘211 Patent. [R. 55].
Accordingly, while Genuine Gemstone seeks a stay of ACN’s patent infringement claims, it asks
the Court to proceed with determining the true owner of the ‘211 Patent, whether that be
accomplished by summary judgment or at trial in July 2015. According to Genuine Gemstone,
“any adjudication of the patent [before the Patent Office] without first resolving the ownership
issue would deprive Genuine Gemstone of its opportunity to defend its patent.” [R. 101, p. 1].
Though ACN initially opposed the partial stay, Genuine Gemstone has since notified the Court

that ACN consents. Id.
Accordingly, Genuine Gemstone’s motion for a partial stay [R. 29] is Granted. The
infringement and validity claims will be Stayed pending completion of the CBM review. The
ownership claims, however, will proceed.
It is so ORDERED.

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UNITED STATES DISTRICT JUDGE

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