Shoes by Firebug LLC v. Stride Rite Children's Group, LLC

Filing 37

MEMORANDUM OPINION AND ORDER - It is therefore ORDERED that Defendant's Motion to Stay Proceedings Pending Inter Partes Review (Dkt. 24 ) is hereby DENIED WITHOUT PREJUDICE. Signed by Judge Amos L. Mazzant, III on 10/18/2017. (baf, )

United States District Court
EASTERN DISTRICT OF TEXAS
SHERMAN DIVISION

SHOES BY FIREBUG LLC
v.
STRIDE RITE CHILDREN’S GROUP, LLC

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Civil Action No. 4:16-CV-00899
Judge Mazzant

MEMORANDUM OPINION AND ORDER
Pending before the Court is Defendant Stride Rite Children’s Group LLC’s Motion to Stay
Proceedings Pending Inter Partes Review (Dkt. #24). After reviewing the relevant pleadings and
motion, the Court finds the motion should be denied.
BACKGROUND
This case arises from Plaintiff Shoes by Firebug LLC’s allegations that Defendant
infringed two patents owned by Plaintiff—United States Patent Nos. 8,992,038 (“the ’038 Patent”)
and 9,301,574 (“the ’574 Patent”). On July 18, 2017, Defendant filed two petitions with the Patent
Trial and Appeal Board (“PTAB”) for inter partes review. See Dkt. #24, Exhibits 3 and 4. The
PTAB has not yet acted on Defendant’s petitions, but is expected to provide decisions regarding
whether or not to institute review by or about January 2018.
On September 6, 2017, Defendant filed this Motion to Stay (Dkt. #24). Plaintiff filed its
response (Dkt. #31) on September 20, 2017, and Defendant filed its reply (Dkt. #34) on September
28, 2017.
LEGAL STANDARD
The district court has the inherent power to control its own docket, including the power to
stay proceedings. Clinton v. Jones, 520 U.S. 681, 706 (1997). How to best manage the Court’s

docket “calls for the exercise of judgment, which must weigh competing interests and maintain an
even balance.” Landis v. N. Am. Co., 299 U.S. 248, 254–55 (1936).
“District courts typically consider three factors when determining whether to grant a stay
pending inter partes review of a patent in suit: (1) whether the stay will unduly prejudice the
nonmoving party, (2) whether the proceedings before the court have reached an advanced stage,
including whether discovery is complete and a trial date has been set, and (3) whether the stay will
likely result in simplifying the case before the court.” NFC Techs. LLC v. HTC Am., Inc., No.
2:13-cv-1058-WCB, 2015 WL 1069111, at *2 (E.D. Tex. Mar. 11, 2015) (Bryson, J.). “Based on
th[ese] factors, courts determine whether the benefits of a stay outweigh the inherent costs of
postponing resolution of the litigation.” Id.
ANALYSIS
Where a motion to stay is filed before the PTAB institutes any proceeding, courts often
withhold a ruling pending action on the petition by the PTAB or deny the motion without prejudice to
allow refiling in the event that the PTAB institutes a proceeding. VirtualAgility Inc. v. Salesforce.com,
Inc., 759 F.3d 1307, 1316 (Fed. Cir. 2014) (citing Checkfree Corp. v. Metavante Corp., No. 12-cv-15,
2014 WL 466023, at *1 (M.D. Fla. Jan. 17, 2014)); see also NFC Techs., 2015 WL 1069111, at *6.
Indeed, this Court has a consistent practice of denying motions to stay when the PTAB has yet to
institute post-grant proceedings. Trover Group, Inc. v. Dedicated Micros USA, No. 2:13-cv-1047WCB, 2015 WL 1069179, at *6 (E.D. Tex. Mar. 11, 2015) (Bryson, J.) (“This Court’s survey of cases
from the Eastern District of Texas shows that when the PTAB has not yet acted on a petition for inter
partes review, the courts have uniformly denied motions for a stay.”).

Based on these circumstances, the Court concludes that Defendant’s motion is premature,
and a stay of these proceedings in advance of the PTAB’s decision on whether or not to grant the
petitions for inter partes review should be denied.
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CONCLUSION
It is therefore ORDERED that Defendant’s Motion to Stay Proceedings Pending Inter
Partes Review (Dkt. #24) is hereby DENIED WITHOUT PREJUDICE.

SIGNED this 18th day of October, 2017.

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AMOS L. MAZZANT
UNITED STATES DISTRICT JUDGE

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