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Air Vent, Inc v. Owens Corning Corporation

May 8, 2012

AIR VENT, INC., PLAINTIFF,
v.
OWENS CORNING CORPORATION, DEFENDANT.



The opinion of the court was delivered by: McVerry, J.

MEMORANDUM OPINION AND ORDER

Pending before the Court are the following: * PLAINTIFF'S MOTION FOR PRELIMINARY INJUNCTION, with brief in support (Document Nos. 43 and 44), DEFENDANT'S MEMORANDUM IN OPPOSITION TO AIR VENT'S RENEWED MOTION FOR PRELIMINARY INJUNCTION (Document No. 49); and PLAINTIFF'S REPLY TO DEFENDANT'S OPPOSITION TO MOTION FOR A PRELIMINARY INJUNCTION (Document No. 54);

* DEFENDANT'S MOTION TO STAY PENDING INTER PARTES REEXAMINATION OF THE PATENTS IN SUIT, with brief in support (Document Nos. 105 and 106), PLAINTIFF'S OPPOSITION TO DEFENDANT'S MOTION FOR STAY PENDING INTER PARTES REEXAMINATION OF THE PATENTS IN SUIT (Sealed Document Nos. 112 and 114), and DEFENDANT'S REPLY IN SUPPORT OF ITS MOTION TO STAY PENDING INTER PARTES REEXAMINATION OF THE PATENTS-IN-SUIT (Sealed Document No. 117); and

* DEFENDANT'S MOTION FOR A PROTECTIVE ORDER STAYING DISCOVERY PENDING THE COURT'S RULING ON DEFENDANT'S MOTION TO STAY (Document No. 107); PLAINTIFF'S OPPOSITION TO DEFENDANT'S MOTION FOR PROTECTIVE ORDER (Document No. 109); and DEFENDANT'S REPLY IN SUPPORT OF ITS MOTION FOR A PROTECTIVE ORDER STAYING DISCOVERY PENDING THE COURT'S RULING ON DEFENDANT'S MOTION TO STAY (Document No. 110).

The parties have fully stated their respective positions and have submitted numerous exhibits. The motions are ripe for disposition. Based on the reasons that follow, Plaintiff's motion for a preliminary injunction will be held in abeyance pending the U.S. Patent and Trademark Office's decision on whether to grant the requests for inter partes reexamination,*fn1

Owens Corning's motion to stay the matter pending the decision of the PTO to re-examine the patents-in-suit will be granted,*fn2 and Owens Corning's Motion for Protective Order will be denied as moot.

Factual and Procedural Background

On July 14, 2011, Air Vent filed an Amended Complaint for patent infringement against Owens Corning which sets forth two counts for direct infringement of U.S. Patent No. 6,299,528 ("the '528 Patent") and U.S. Patent No. 6,482,084 ("the '084 Patent"), and a third count for inducement to infringe U.S. Patent No. 6,793,574 ("the '574 Patent) (hereinafter referred to as the "Patents-in-Suit.") Air Vent also filed a Motion for Preliminary Injunction.

On March 29, 2012, Owens Corning filed a request for inter partes reexamination of the '574 Patent with the United States Patent and Trademark Office ("PTO"). On or about March 30, 2012, Owens Corning filed two additional requests for inter partes reexamination of the '528 and '084 Patents. The three requests seek inter partes reexamination of each and every claim of all the Patents-in-Suit. The PTO must decide whether to grant Owens Corning's reexamination requests within three months of the March 29 and March 30 filing dates.*fn3 35 U.S.C.§ 312(a).

Contemporaneously with the filing of the requests for inter partes reexamination, Owens Corning filed in this Court the instant two motions.

Discussion

"Courts have inherent power to manage their dockets and stay proceedings, including the authority to order a stay pending conclusion of a PTO reexamination." Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1426-27 (Fed. Cir. 1988). The discretion of whether or not to stay a patent case during reexamination is discretionary. See Viskase Corp. v. Am Nat'l Can Co., 261 F.3d 1316, 1328 (Fed. Cir. 2001). "[T]here is a liberal policy in favor of granting motions to stay proceedings pending the outcome of USPTO reexamination or reissuance proceedings." ACSII Corp. v. STD Entmt't USA, 844 F. Supp. 1378, 1381 (N.D. Cal. 1994). However, "[a] court is under no obligation to delay its own proceedings by yielding to ongoing PTO patent reexaminations, regardless of their relevancy to infringement claims which the court must analyze." NTP, Inc. v. Research In Motion, Ltd., 397 F. Supp. 2d 785, 787 (E.D. Va. 2005) (citing Viskase Corp., 261 F.3d at 1328)). Nevertheless, a court may decide to grant a motion to stay "in order to avoid inconsistent results, narrow the issues, obtain guidance from the PTO, or simply to avoid the needless waste of judicial resources, especially if the evidence suggests that the patents-in-suit will not survive reexamination." MercExchange, L.L.C. v. eBay, Inc., 500 F. Supp.2d 556, 563 (E. D. Va. 2007).

Courts consider three (3) main factors in determining whether to stay a case pending reexamination: (i) whether discovery is complete and whether a trial date has been set; (ii) whether a stay will simplify the issues in question and trial of the case; and (iii) whether a stay would unduly prejudice or present a clear tactical disadvantage to the nonmoving party. Telemac Corp. v. Teledigital, Inc., 450 F. Supp.2d 1107, 1111 (N.D. Cal. 2006). Having considered the arguments made in support of and in opposition to Owens Corning's request for a stay, the Court finds for the following reasons ...


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