National Products, Inc v. Gamber-Johnson LLC

Filing 44

ORDER granting 43 Stipulated Motion to Stay action pending proceedings before US Patent and Trademark Office by Judge Robert S. Lasnik.(RS)

Honorable Robert S. Lasnik

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UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF WASHINGTON
AT SEATTLE

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NATIONAL PRODUCTS, INC.,

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Plaintiff,

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Case No. 2:12-cv-840-RSL

v.
GAMBER-JOHNSON LLC,

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STIPULATED MOTION AND ORDER TO
STAY ACTION PENDING
PROCEEDINGS BEFORE
THE UNITED STATES PATENT AND
TRADEMARK OFFICE

Defendant.
NOTE ON MOTION CALENDAR:
Thursday, November 8, 2012

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I.

INTRODUCTION

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Plaintiff National Products, Inc. (“NPI”) and Defendant Gamber-Johnson LLC

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(“Gamber-Johnson”) respectfully stipulate and move to stay this action pending resolution of

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the inter partes reexamination of U.S. Patent No. 8,179,672 (“the ’672 patent”) by the United

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States Patent and Trademark Office (“PTO”). Gamber-Johnson has maintained that a stay in

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this case is appropriate based on its request for and the PTO’s grant of an inter partes

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reexamination of the ’672 patent. NPI agrees that a stay is now appropriate based on more

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recent actions at the PTO. First, NPI recently amended or cancelled claims 1-33 of the ’672

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patent in response to the office action in the inter partes reexamination. Second, the PTO

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recently granted a request to conduct an ex parte reexamination of claims 34 and 35 of the

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’672 patent. Accordingly, a stay will promote efficiency and preserve judicial resources
STIPULATED MTN AND ORDER TO
STAY ACTION PENDING USPTO PROCEEDINGS
Case No. 2:12-cv-840-RSL

FENWICK & W EST LLP

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1191 SECOND AVENUE, 10TH FLOOR
SEATTLE, W ASHINGTON 98101
TELEPHONE [phone]
FACSIMILE 206.389.4511

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because the asserted patent claims in this action are now unlikely to survive the

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reexaminations in their current forms as set out in the Complaint.

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II.

FACTUAL BACKGROUND

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NPI and Gamber-Johnson design, produce, and sell a variety of mounting devices for

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use in or on cars, boats, planes, and other vehicles. On May 15, 2012, the PTO issued to NPI

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the ’672 patent, which is directed to a portable electronics (e.g., laptops) mounting device

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designed for use in vehicles. Dkt. No. 1, Complaint at ¶ 8, Ex. A. That same day, NPI

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brought this action against Gamber-Johnson alleging infringement of the ’672 patent. See id.

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Gamber-Johnson has denied these allegations and has filed counterclaims, inter alia, seeking

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a declaration that the ’672 patent is invalid.
On May 17, 2012, Gamber-Johnson’s sister company, L&P Property Management

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Co., filed an inter partes request for reexamination of the ’672 patent with the PTO; two

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weeks later, Gamber-Johnson moved the Court to stay this Action pending final resolution of

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the inter partes reexamination. Dkt. No. 10, Motion to Stay Proceedings Pending

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Reexamination of the ’672 Patent, at 2. On June 21, 2012, the PTO granted the request for

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claims 1 through 33 but declined to reexamine claims 34 and 35 of the ’672 patent. Dkt. No.

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23, Declaration of Mark S. Parris in Support of Notice of Reexamination Status, Ex. 8. On

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August 14, 2012, the Court denied Gamber-Johnson’s motion to stay, in part finding that “the

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PTO’s refusal to reexamine claims 34 and 35, the parties’ litigation history, and the lengthy

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period of delay caused by reexamination would prejudice plaintiff if a stay were granted.”

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Dkt. No. 28, Order Denying Motion to Stay, at 5.

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Recent developments at the PTO now support a stay in this case. Claims 1-33 of the

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’672 patent were amended or cancelled in response to an office action in the inter partes

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reexamination. L&P Property Management Co. also filed a second reexamination request,

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this time for the ex parte reexamination of claims 34 and 35 of the ’672 patent, which the

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PTO granted on October 26, 2012. Given these developments, NPI now agrees that a stay in
STIPULATED MTN AND ORDER TO
STAY ACTION PENDING USPTO PROCEEDINGS
Case No. 2:12-cv-840-RSL

FENWICK & W EST LLP

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1191 SECOND AVENUE, 10TH FLOOR
SEATTLE, W ASHINGTON 98101
TELEPHONE [phone]
FACSIMILE 206.389.4511

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this litigation is warranted at the present time.

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III.

ARGUMENT
The Court has broad discretion to manage its docket, including the inherent power to

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grant a stay pending a PTO reexamination. Proctor & Gamble Co. v. Kraft Foods Global,

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Inc., 549 F.3d 842, 849 (Fed. Cir. 2008). In determining whether to grant a stay pending

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reexamination, the court considers: (1) whether a stay will simplify the issues in question and

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the trial of the case, (2) whether discovery is complete and whether a trial date has already

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been set, and (3) whether a stay will unduly prejudice or present a clear tactical disadvantage

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to the non-moving party. Pac. Bioscience Labs., Inc. v. Pretika Corp., 760 F. Supp. 2d 1061,

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1063 (W.D. Wash. 2011).
At this time, all three factors support a stay. A stay will simplify the issues in question

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and preserve judicial resources because we now know that most of the asserted claims of the

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’672 patent will not survive the reexamination unchanged. Thus, litigation of these claims as

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they now exist would waste both the Court’s and the parties’ time and resources. Also,

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discovery is in its infancy. The parties have not served their initial contentions or commenced

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full discovery including the production of documents, depositions of witnesses, or answering

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interrogatories. While a trial date has been set, it is not scheduled until April 1, 2014. Dkt.

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No. 39, Minute Order Setting Trial Date & Related Dates, at 1. Nor will a stay unduly

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prejudice or present a clear tactical disadvantage to the non-moving party because both parties

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stipulate to the stay.

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IV.

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CONCLUSION
For these reasons, NPI and Gamber-Johnson respectfully request that the court stay

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this litigation pending resolution of the inter partes reexamination of U.S. Patent No.

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8,179,672, and that the parties be required to file a joint status report every six months to

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update the Court regarding the ongoing reexamination proceedings.

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STIPULATED MTN AND ORDER TO
STAY ACTION PENDING USPTO PROCEEDINGS
Case No. 2:12-cv-840-RSL

FENWICK & W EST LLP

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1191 SECOND AVENUE, 10TH FLOOR
SEATTLE, W ASHINGTON 98101
TELEPHONE [phone]
FACSIMILE 206.389.4511

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Date: November 8, 2012

Respectfully submitted,
FENWICK & WEST LLP

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By: s/Ewa M. Davison
David K. Tellekson, WSBA No. 33523
Ewa M. Davison, WSBA No. 39524
Jeffrey A. Ware, WSBA No. 43779
1191 Second Avenue, 10th Floor
Seattle, Washington 98101
Phone:
206-389-4510
Fax:
206-389-4511
Email:
[e-mail]
[e-mail]
[e-mail]
Attorneys for Plaintiff
National Products, Inc.

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ORRICK HERRINGTON & SUTCLIFFE LLP

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By: s/Jeffrey Cox
Mark S. Parris, WSBA No. 13870
Jeffrey Cox, WSBA No. 37534
701 Fifth Avenue, Ste. 5600
Seattle, Washington 98104-7097
Phone:
206-839-4300
Fax:
206-839-4301
Email:
[e-mail]
[e-mail]
Attorneys for Defendant
Gamber-Johnson LLP

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STIPULATED MTN AND ORDER TO
STAY ACTION PENDING USPTO PROCEEDINGS
Case No. 2:12-cv-840-RSL

FENWICK & W EST LLP

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1191 SECOND AVENUE, 10TH FLOOR
SEATTLE, W ASHINGTON 98101
TELEPHONE [phone]
FACSIMILE 206.389.4511

1

ORDER

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This matter is before the Court on the Stipulated Motion to Stay Action Pending

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Proceedings before the United States Patent and Trademark Office. After reviewing the

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motion and declaration in support thereof, this Court finds that a stay is warranted. A stay

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will simplify the issues in question and the trial of the case, discovery is still in the early

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stages, and neither party is prejudiced or is presented with a tactical disadvantage if a stay is

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ordered. IT IS HEREBY ORDERED THAT:

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This action is stayed pending resolution of the inter partes reexamination of U.S.
Patent No. 8,179,672. The parties will file a joint status report every six months from this
date, updating the Court on the reexamination proceedings before the United States Patent and

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Trademark Office. The Court will consider motions to lift the stay, if warranted.
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Dated this 9th day of November, 2012.

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A

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Hon. Robert S. Lasnik
United States District Judge

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STIPULATED MTN AND ORDER TO
STAY ACTION PENDING USPTO PROCEEDINGS
Case No. 2:12-cv-840-RSL

FENWICK & W EST LLP

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1191 SECOND AVENUE, 10TH FLOOR
SEATTLE, W ASHINGTON 98101
TELEPHONE [phone]
FACSIMILE 206.389.4511