Datatreasury Corporation v. Wells Fargo & Company et al

Filing 796

MOTION to Stay Defendants' Unopposed Motion to Stay by Electronic Data Systems Corp., First Citizens Bank & Trust Company, Compass Bancshares, Inc.,. Compass Bank, First Horizon National Corporation, First Tennessee Bank, National Association, The Clearing House Payments Company, LLC, Viewpointe Archive Services, LLC, Bank of Tokyo-Mitsubishi UFJ, LTD, Deutsche Bank Trust Company Americas, Citizens Financial Group, Inc., The PNC Financial Services Group, Inc., PNC Bank, National Association, Keycorp, Keybank National Association, Lasalle Bank Corporation, Lasalle Bank NA, Wachovia Corporation, Wachovia Bank, National Association, U.S. Bancorp, U.S. Bank, National Association, National City Corporation, National City Bank, BB&T Corporation, Branch Banking and Trust Company, M&T Bank Corporation, M&T Bank, Comerica Incorporated, Comerica Bank & Trust, National Association, Union Bank of California National Association, The Bank of New York, The Bank of New York Co, Inc., UBS Americas, Inc., Bank of America, National Association, City National Corporation, City National Bank, Viewpointe Archive Services, LLC, Lasalle Bank Corporation, U.S. Bancorp, U.S. Bank, National Association, National City Corporation, National City Bank, UBS Americas, Inc., Keycorp, Keybank National Association, The PNC Financial Services Group, Inc., PNC Bank, National Association, The Bank of New York, The Bank of New York Co, Inc., Union Bank of California National Association, Keycorp, Keybank National Association, Bancorp South Bank, Magtek, Inc., Unionbancal Corporation, Wells Fargo & Company, Wells Fargo Bank, National Association, Magtek, Inc., Bank of America Corporation, Bank of America, National Association, U.S. Bancorp, U.S. Bank, National Association, Wachovia Corporation, Wachovia Bank, National Association, Suntrust Banks, Inc., Suntrust Bank, UBS Americas, Inc., BB&T Corporation, Branch Banking and Trust Company, Bancorpsouth, Inc., Bancorp South Bank, Compass Bancshares, Inc., The Bank of New York,. Compass Bank, Cullen/Frost Bankers, Inc., The Frost National Bank, First Horizon National Corporation, First Tennessee Bank, National Association, HSBC North America Holdings Inc, HSBC Bank USA, N.A., Harris Bankcorp, Inc., Harris, N.A., National City Corporation, National City Bank, Zions Bancorporation, Zions First National Bank, Bank of New York Co., Inc., The Bank of New York Co, Inc., Unionbancal Corporation, Union Bank of California National Association, Bank of Tokyo-Mitsubishi UFJ, LTD, Citizens Financial Group, Inc., City National Corporation, City National Bank, City National Corporation, Comerica Incorporated, City National Bank, Comerica Bank & Trust, National Association, Deutsche Bank Trust Company Americas, First Citizens Bancshares, Inc., First Citizens Bank & Trust Company, Keycorp, Keybank National Association, Lasalle Bank Corporation, Lasalle Bank NA, M&T Bank Corporation, M&T Bank, The PNC Financial Services Group, Inc., PNC Bank, National Association, Small Value Payments Company, LLC, The Clearing House Payments Company, LLC, Magtek, Inc.. (Attachments: #1 Text of Proposed Order Defendants' Proposed Order#2 Text of Proposed Order Plaintiff's Proposed Order)(Melsheimer, Thomas)

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Case 2:06-cv-00072-DF-CMC Document 796-1 Filed 09/14/2007 Page 1 of 5 U N I T E D STATES DISTRICT COURT F O R THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION D A T A T R E A S U R Y CORPORATION, Plaintiff v. W E L L S FARGO & COMPANY; et al. Defendants DEFENDANTS' U N O P P O SED MOTION FOR ENTRY OF STAY All of the defendants in the above styled action, except for Wells Fargo & Co., Wells Fargo Bank, N.A. (who are already subject to a stay) and three other defendants,1 who are sued on one or more of United States Patent Nos. 5,265,007; 5,717,868; 5,583,759; and 5,930,778 (the "Huntington Patents") (the "Defendants") hereby move that the Court stay litigation in this matter concerning the Huntington Patents. The Court recently granted the Citigroup defendants' motion to stay litigation of the Huntington Patents in the case between Plaintiff and the Citigroup defendants, DataTreasury Corp. v. Citigroup Inc., Citibank N.A., 2:05-cv-294 (Docket No. 150). The Court's order required the Citigroup defendants to sign the following stipulation in order to accept the stay: As a condition of the stay, Defendants may not argue invalidity at trial based on one or more prior art printed publications that were submitted by the petitioner in the reexamination proceedings. However, Defendants will be permitted to rely for obviousness on the combination of printed publication reference that was 2:06-CV-72 DF 1 First Data, Remitco, and TeleCheck have not yet decided whether to join this motion. Those defendants may join at a later time. DEFENDANTS' UNOPPOSED MOTION FOR ENTRY OF STAY - Page 1 Case 2:06-cv-00072-DF-CMC Document 796-1 Filed 09/14/2007 Page 2 of 5 s u b m i t t e d by petitioner in the reexamination with prior art that was not so submitted.2 Id. In the interests of judicial economy, the Defendants in this action likewise request that the Court stay litigation of the Huntington Patents for the reasons set forth in the Citigroup defendants' Motion to Stay Litigation Pending Patent Office Reexamination of the Huntington Patents (2:05-cv-294, Docket No. 133).3 The Defendants further request that, if the Court should deem a stipulation necessary, that the Court require the same stipulation set forth in the Citigroup stay (recited supra). The Plaintiff and Defendants have but a single disagreement related to the entry of a stay in this case regarding the Huntington Patents. The Plaintiff does not oppose a stay of the Huntington Patents' litigation in this case based on the prior ruling by the Court in the Citigroup case. However, the Plaintiff opposes entry of a stay premised on the stipulation required in the Citigroup case. Instead, the Plaintiff contends that the stay should be conditioned on the following stipulation: As a condition of the stay, Defendants may not argue invalidity at trial based on one or more prior art printed publications considered by the United States Patent and Trademark Office in the course of the reexamination proceedings. The Defendants oppose the Plaintiff's proposed stipulation as being overly broad and will not accept a stay premised on acceptance of such a stipulation.4 2 This stipulation is identical to the stipulation the Court previously required for a stay of the "Ballard Patents" patents in this matter. (Docket No. 411). 3 The Defendants incorporate by reference the Defendants' Motion to Stay Litigation Pending Patent Office Reexamination of the Huntington Patents and the Defendants' Reply in Support of Their Motion to Stay Litigation Pending Patent Office Reexamination of the Huntington Patents (2:05-cv-294, Docket Nos. 133, 142) as if fully set forth herein. 4 This motion attaches two proposed orders for the Court's consideration. Exhibit A to this motion includes the Defendants' proposed stipulation and exhibit B includes the Plaintiff's. The proposed orders are identical in all other respects. DEFENDANTS' UNOPPOSED MOTION FOR ENTRY OF STAY - Page 2 Case 2:06-cv-00072-DF-CMC Document 796-1 Filed 09/14/2007 Page 3 of 5 Should the Court grant a stay, all Defendants and the Plaintiff agree that briefing should be concluded on The Clearing House Payments Company L.L.C.'s Motion for Summary Judgment of Noninfringement of the '868 Patent (Docket No. 715). The lone remaining brief to be filed is a sur-reply from the Plaintiff. Allowing submission of the sur-reply, if any, will allow the parties to complete briefing on the motion without a potentially lengthy delay during reexamination. Accordingly, the parties further request that the Court allow the Plaintiff to file a sur-reply, if any, to the pending motion even if the case is otherwise stayed. DEFENDANTS' UNOPPOSED MOTION FOR ENTRY OF STAY - Page 3 Case 2:06-cv-00072-DF-CMC Document 796-1 Filed 09/14/2007 Page 4 of 5 Dated: September 14, 2007 Respectfully submitted, FISH & RICHARDSON P.C. By: /s Thomas M. Melsheimer Thomas M. Melsheimer Texas Bar No. 13922550 1717 Main Street Suite 5000 Dallas, TX 75201 214-747-5070 (Telephone) 214-747-2091 (Telecopy) Robert E. Hillman Fish & Richardson P.C. 225 Franklin Street Boston, MA 02110-2804 617-542-5070 (Telephone) 617-542-8906 (Telecopy) Robert M. Parker Robert Christopher Bunt Parker & Bunt, P.C. 100 E. Ferguson, Suite 1114 Tyler, Texas 75702 903-531-3535 (Telephone) 903-533-9687 (Telecopy) Michael E. Jones Texas Bar No. 10929400 E. Glenn Thames, Jr. Texas Bar No. 00785097 Potter Minton 500 Plaza Tower 110 North College, Suite 500 Tyler, TX 75702 Counsel for Defendants BANK OF AMERICA CORPORATION, BANK OF AMERICA, NATIONAL ASSOCIATION DEFENDANTS' UNOPPOSED MOTION FOR ENTRY OF STAY - Page 4 Case 2:06-cv-00072-DF-CMC Document 796-1 Filed 09/14/2007 Page 5 of 5 C E R T I F I C A T E OF SERVICE The undersigned hereby certifies that a true and correct copy of the above and foregoing document has been served on all counsel of record via the Court's CM/ECF system per Local Rule CV-5(a)(3). /s Thomas M. Melsheimer Thomas M. Melsheimer 90239862.4 DEFENDANTS' UNOPPOSED MOTION FOR ENTRY OF STAY - Page 5

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