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Wonderland Nurserygoods Co. v. Thorley Industries, LLC

United States District Court, W.D. Pennsylvania

February 24, 2014

WONDERLAND NURSERYGOODS CO., LTD., Plaintiff,
v.
THORLEY INDUSTRIES, LLC, d/b/a 4MOMS, Defendant.

MEMORANDUM OPINION AND ORDER

NORA BARRY FISCHER, District Judge.

I. INTRODUCTION

This patent infringement action by Plaintiff Wonderland NurseryGoods Co., Ltd. ("Wonderland") against Defendant Thorley Industries, LLC, d/b/a 4Moms ("Thorley") was set to commence jury selection and trial on January 27, 2014, per the agreed upon Pretrial Order in this case. (Docket No. 63). Prior to jury selection, Wonderland filed several motions in limine seeking pretrial rulings on the admissibility of certain evidence at trial. Presently pending before the Court is Wonderland's Motion in Limine No. 1 to exclude references to the inter partes reexamination of the patent in suit. (Docket No. 178). The Court heard argument on said Motion during the Final Pretrial Conference on January 21, 2014, (Docket No. 205), after which Wonderland filed a Reply, (Docket No. 213), and Thorley filed a Sur-Reply, (Docket No. 224).

Wonderland also objected to Defense Exhibit D-4, the prosecution history of the inter partes reexamination, (Docket No. 173), which this Court sustained, (Docket No. 216), as Defense Exhibit D-4 spanned 989 pages. Thorley immediately moved for reconsideration, (Docket No. 217), and Wonderland filed a Response, (Docket No. 226), concerning three documents contained within Defense Exhibit D-4. These documents are the Right of Appeal Notice (Defense Exhibit D-04-346 to D-04-452), the First Office Action, (Defense Exhibit D-04-747 to D-04-777), and the Order Granting Request for Inter Partes Reexamination, (Defense Exhibit D-04-727 to D-04-742) (collectively the "Reexam Documents").[1]

On January 22, 2014, the Court issued an Order to Show Cause concerning: (1) whether the Court should postpone trial until after the final decision on any administrative appeal at the PTO; and (2) whether Wonderland should irrevocably withdraw, with prejudice, the '609 Patent. (Docket No. 210). The parties filed their responses to the Show Cause Order on January 24, 2014, (Docket Nos. 219, 220), and this Court held a Motion Hearing on the aforementioned issues on January 27, 2014, (Docket No. 228). Upon consideration of all of the parties' filings, the parties' arguments at the Final Pretrial Conference held on January 21, 2014 [205], the parties' arguments at the Motion Hearing held on January 27, 2014 [228], and for the following reasons, Thorley's renewed Motion to Stay [219] is GRANTED, and Thorley's Motion for Reconsideration [217] and Wonderland's Motion to Exclude [178] are DENIED, as premature.

II. BACKGROUND

On January 12, 2012, Thorley filed a request for the inter partes reexamination of U.S. Patent No. 8, 047, 609 (the "'609 Patent") (filed Dec. 3, 2010), (Docket No. 1-2 at 2), at the U.S. Patent and Trademark Office ("PTO"). See Right of Appeal Notice, (Docket No. 209-3 at 2). The '609 Patent is directed at "infant rocking chairs, " with "a driving device for driving a seat body of an infant rocking chair to move back and forth as well as up and down." See '609 Patent col. 1 ll.15-19, (Docket No. 1-2 at 19). In its inter partes reexamination request, Thorley asserted challenges against claims 1, 2, 3, 12, 13, 19, and 20 of the '609 Patent. (Docket No. 15-1 at 3). One month later, on February 14, 2012, the PTO issued an Order Granting Request for Inter Partes Reexamination, concluding that there was a reasonable likelihood that Thorley would prevail as to claims 1, 2, 12, 13, 19, and 20. (Defense Exhibit D-04-727 at 730). Also, on February 14, 2012, the PTO issued a First Office Action rejecting all of the claims under reexamination, i.e., claims 1, 2, 12, 13, 19 and 20. (Defense Exhibit D-04-747 at 749). The First Office Action expressly stated that claims 3-11 and 14-18 were not subject to reexamination. Id.

Two days before the PTO issued the First Office Action, on February 12, 2012, [2] Wonderland filed this case against Thorley for infringement of the '609 Patent by the accused mamaRoo device.[3] (Docket No. 1). Subsequently, on February 24, 2012, Thorley filed a Motion to Stay the instant proceedings pending the inter partes reexamination of the '609 Patent, (Docket No. 14), which this Court denied in a Memorandum Opinion and Order dated March 14, 2012, Wonderland NurseryGoods Co. v. Thorley Indus., LLC, 858 F.Supp.2d 461, 462 (W.D. Pa. 2012). At the time of the Court's ruling, several facts weighed against granting the stay. These facts included (1) the prejudice to Wonderland due to delay, given direct competition between Wonderland and Thorley, and (2) the inability of the reexamination proceedings to resolve completely the issues in this case, because Wonderland asserted that Thorley infringed claims 3 and 14 of the '609 Patent, both of which were not subject to reexamination. Id.

Thorley did not seek reconsideration, [4] and a Case Management Conference was set for April 14, 2012. (Docket No. 29). Pursuant to the Court's Initial Patent Scheduling Order, (Docket No. 30), Wonderland served its Infringement Contentions on May 10, 2012, (Docket No. 177-3), and Thorley served its Non-Infringement and Invalidity Contentions on May 24, 2012, (Docket No. 177-4). The parties met and conferred regarding the disputed claim terms, and filed a Revised (and corrected) Joint Disputed Claim Construction Chart on September 25, 2012. (Docket Nos. 45-46). The Court held a Markman Hearing on September 27, 2012, (Docket No. 47), and ordered preparation of the transcript, (Docket No. 51). On January 11, 2013, after receiving the Revised (and corrected) Claim Construction Chart, the transcript of the Markman Hearing, and the Pre-Hearing and Post-Hearing Briefs, (Docket Nos. 39-43, 45-47, 51, 53-54), the Court issued a Memorandum Opinion and Claim Construction Order, Wonderland NurseryGoods Co. v. Thorley Indus., LLC , Civ. No. 12-196, 2013 WL 141546, *1 (W.D. Pa. Jan. 11, 2013). Based on the Court's Claim Construction, Wonderland entered into a stipulation of non-final judgment of non-infringement of claims 1-3 of the '609 Patent. (Docket No. 66).

In its Claim Construction Opinion, the Court found that the term "infant rocking chair" within the preamble was limiting because "the patent shows that the driving device does not just happen to be used in infant rocking chairs; its fundamental purpose is to provide motion that mimics a person holding an infant in his or her arms, resulting in infant comfort.'" Wonderland NurseryGoods Co., 2013 WL 141546, at *6 (quoting '609 Patent col.1 ll.20-38). To that end, "[r]ecitation of infant rocking chair' in Claims 1, 12, and 19 [wa]s necessary to understand the subject matter encompassed by the claim." Id. (citing Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349, 1358 (Fed. Cir. 2012)). The Court also noted the title of the patent, "Infant Rocking Chair and Driving Device for Driving the Same." Id. Thus, the Court found that "the preamble term, infant rocking chair' give[s] life' to the claim and shall be considered limiting."[5] Id. (citing Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)).

Following the Court's claim construction, expert discovery commenced on March 15, 2013 and concluded on May 30, 2013, with summary judgment and Daubert motions due on July 1, 2013. (Docket No. 61). Meanwhile, on March 14, 2013, Wonderland filed an early Motion for Summary Judgment of Infringement of claims 12-14 and 19-20, (Docket Nos. 68-72, 76-79, 81-83), which the Court denied, without prejudice, (Docket No. 84). On April 12, 2013, Wonderland also filed a Motion to Strike the Report of Thorley's Expert, (Docket Nos. 73-75), which the Court denied in a Memorandum Opinion, see Wonderland NurseryGoods Co. v. Thorley Indus., LLC , Civ. No. 12-196, 2013 WL 2471801, *1 (W.D. Pa. June 7, 2013).

On July 1, 2013, the parties filed Cross-Motions for Summary Judgment of Non-Infringement, (Docket Nos. 104-07), and Infringement, (Docket Nos. 95-98), to which the parties filed Responses, (Docket Nos. 122-25, 129-31), and Replies, (Docket Nos. 135, 140-42). Thorley also filed two Motions for Summary Judgment of Invalidity of the '609 Patent based on anticipation and obviousness, (Docket Nos. 108-11), and the written description requirement under ยง 112, (Docket Nos. 100-02), as well as a Daubert Motion to Strike the Report of Wonderland's Expert, (Docket No. 112-13), to which Wonderland filed Responses, (Docket Nos. 113, 126-28, 132-33), and Thorley filed Replies, (Docket Nos. 121, 136-39). The Court heard oral argument on said Motions on August 26, 2013, (Docket Nos. 143-44), after which the Court ordered preparation of the transcript, filed of record on September 13, 2013 at Docket No. 145.

The Court denied Thorley's Motion to Strike on December 5, 2013, see Wonderland NurseryGoods Co. v. Thorley Indus., LLC , Civ. No. 12-196, 2013 WL 6328772, *1 (W.D. Pa. Dec. 5, 2013), and its Motion for Summary Judgment of Invalidity under the Written Description requirement on December 16, 2013, see Wonderland NurseryGoods Co. v. Thorley Indus., LLC , Civ. No. 12-196, 2013 WL 6586180, *1 (W.D. Pa. Dec. 16, 2013). On December 19, 2013, the Court granted in part and denied in part the parties' remaining Motions for Summary Judgment. Wonderland NurseryGoods Co. v. Thorley Indus., LLC , Civ. No. 12-196, 2013 WL 6731899, *1 (W.D. Pa. Dec. 19, 2013). The Court granted summary judgment of non-infringement of claims 12-14 and denied summary judgment on invalidity and infringement in all other respects. Id.

After the Court's rulings on summary judgment, the parties prepared for jury selection and trial on the issues of infringement and validity of claims 19 and 20 of the '609 Patent pursuant to the Court's Pretrial Order. (Docket No. 63). As noted, Wonderland filed several motions in limine on December 27, 2013, (Docket Nos. 162-67, 178-82), to which Thorley responded on January 9, 2014, (Docket Nos. 194-96). Thorley also filed a Motion to Exclude Wonderland's Amended Infringement Contentions and Supplemental Expert Report on January 3, 2014, (Docket No. 176), to which Wonderland filed a Response on January 9, 2014, (Docket No. 197), and on which the Court heard oral argument on January 16, 2014, (Docket No. 199). A day later, the Court granted Thorley's Motion to Exclude. Wonderland NurseryGoods Co. v. Thorley Indus., LLC , Civ. No. 12-196, 2014 WL 199789, *1 (W.D. Pa. Jan. 17, 2014).

The Court heard oral argument on Wonderland's motions in limine at the Final Pretrial Conference on January 21, 2014, (Docket No. 205), after which the Court denied Wonderland's motion to exclude patents granted to Thorley, Wonderland NurseryGoods Co. v. Thorley Indus., LLC , Civ. No. 12-196, 2014 WL 241751, *1 (W.D. Pa. Jan. 22, 2014), and granted its motion to exclude references to other litigation, Wonderland NurseryGoods Co. v. Thorley Indus., LLC , Civ. No. 12-196, 2014 WL 289446, *1 (W.D. Pa. Jan. 22, 2014). The Court also made pretrial rulings on objections to trial witnesses; exhibits; and designations of depositions, admissions, and interrogatories.[6] (Docket Nos. 208, 214-216, 218, 230). Within one day of the Court's Order sustaining Wonderland's objections to Defense Exhibit D-4, (Docket No. 216), Thorley filed a Motion for Reconsideration concerning the Reexam Documents, (Docket No. 217).

Given the complexity of the issues before the Court and their effect on the Proposed Jury Instructions, the Court issued a rule upon the parties to show cause concerning: (1) why the trial in this case should not be stayed until after the final resolution of reexamination proceedings, and (2) why Wonderland should not irrevocably withdraw, with prejudice, the '609 Patent. (Docket No. 210); see Oracle America, Inc. v. Google, Inc., Civ. No. 10-03561, (N.D. Cal. Mar. 1, 2012) (Docket No. 757) (Order to answer why trial should not be postponed and why plaintiff should not irrevocably withdraw, with prejudice, patents subject to final office actions). Following the parties' Responses to the Court's Show Cause Order, (Docket Nos. 219-20), the Court convened a Motion Hearing on January 27, 2014, (Docket No. 228), after which the Court granted Thorley's renewed Motion to Stay, with this Memorandum Opinion to follow, (Docket No. 229). The Court now turns to its rationale for granting a stay in this case, on the eve of trial.

III. LEGAL STANDARD

"The Supreme Court has long recognized that district courts have broad discretion to manage their dockets, including the power to grant a stay of proceedings." Procter & Gamble Co. v. Kraft Foods Global, Inc., 549 F.3d 842, 848-49 (Fed. Cir. 2008). A court's power to stay proceedings "is incidental to the power inherent in every court to control the disposition of causes on its docket with economy of time and effort for itself, for counsel and for litigants." See Bechtel Corp. v. Local 215, Laborers' Int'l Union, 544 F.2d 1207, 1215 (3d Cir. 1976) (quoting Landis v. North American Co., 299 U.S. 248, 254-55 (1936)); see also Gould v. Control Laser Corp., 705 F.2d 1340, 1341 (Fed. Cir. 1983); Gunduz v. U.S. Citizenship and Immigration Services, Civ. No. 07-780, 2007 WL 4343246, *1 (W.D. Pa. Dec. 11, 2007) (Ambrose, C.J.) (citing Landis and Bechtel ). A court must exercise its judgment in weighing the competing interests and maintain an even balance when staying a proceeding. See Landis, 299 U.S. at 254-55; Cheyney State College Faculty v. Hufstedler, 703 F.2d 732, 737-38 (3d Cir. 1983); Soverain Software LLC v. Amazon.com, Inc., 356 F.Supp.2d 660, 662 (E.D. Tex. 2005).

In district court cases, "a stay should ordinarily not be granted unless there is a substantial patentability issue raised in the inter partes reexamination proceeding." Procter & Gamble Co., 549 F.3d at 849. "[O]ne purpose of the reexamination procedure is to eliminate trial of that issue (when the claim is canceled)." Fresenius USA, Inc. v. Baxter Int'l, Inc., 721 F.3d 1330, 1340 (Fed. Cir. 2013) (quoting Gould, 705 F.2d at 1342). Another purpose is to "provid[e] the district court with the expert view of the PTO (when a claim survives the reexamination proceeding).'" Cooper Notification, Inc. v. Twitter, Inc., Civ. No. 12-1615, 2013 WL 4611752, *5 (Fed. Cir. Aug. 30, 2013) (quoting Gould, 705 F.2d at 1340). "[W]hen a claim is cancelled, the patentee loses any cause of action based on that claim, and any pending litigation in which the claims are asserted becomes moot." Fresenius USA, Inc., 721 F.3d at 1340.

Moreover, the "effect of the cancellation of a patent pursuant to the statute is no insult to... Article III.'" Id. (quoting Patlex Corp. v. Mossinghoff, 758 F.2d 594, 604, on reh'g, 771 F.2d 480 (Fed. Cir. 1985) ("A defectively examined and therefore erroneously granted patent must yield to the reasonable Congressional purpose of facilitating the correction of governmental mistakes. This Congressional purpose is presumptively correct, and we find that it carries no insult to the Seventh Amendment and Article III.")). "Congress has expressly delegated reexamination authority to the PTO under a statute requiring the PTO to cancel rejected claims, and cancellation extinguishes the underlying basis for suits based on the patent." Id. at 1344, 1346 ("[I]n 1928, Congress acknowledged that cancelled claims were void ab initio. ... And, in 1980, it made that provision applicable to reexamination.").

Thus, "[w]hen a district court stays patent validity proceedings before it until completion of a reexamination proceeding, that stay must be accepted if the purpose of the reexamination statute is to be preserved." Gould, 705 F.2d at 1342. However, if "the copending actions in the district court and the PTO are neither duplicative nor dependent on one another, there is neither any need nor any justification for staying the interfering patents suit to await the outcome of the PTO reexamination." Slip Track Sys., Inc. v. Metal Lite, Inc., 159 F.3d 1337, 1341-42 (Fed. Cir. 1998). "In deciding whether to stay litigation pending reexamination, courts typically consider: (1) whether a stay will unduly prejudice or present a clear tactical disadvantage to the nonmoving party, (2) whether a stay will simplify the issues in question and trial of the case, and (3) whether discovery is complete and whether a trial date has been set." Soverain, 356 F.Supp.2d at 662; see also Xerox Corp. v. 3Com Corp., 69 F.Supp.2d 404, 406 (W.D.N.Y. 1999). "Essentially, courts determine whether the benefits of a stay outweigh the inherent costs based on these factors." Rmail Limited v. Amazon.com, Inc., Civ. No. 10-258 (E.D. Tex. Jan. 30, 2014) (Docket No. 563 at 12-13) (quoting EchoStar Technologies Corp. v. TiVo, Inc., Civ. No. 5:05-CV-81, 2006 WL 2501494, *1 (E.D. Tex. July 14, 2006)).

IV. MOTION TO STAY

As a threshold matter, the Court recognizes that Thorley had initially moved to stay this case on February 24, 2012, (Docket No. 14), which the Court denied in a Memorandum Opinion on March 14, 2012, see Wonderland NurseryGoods Co., 858 F.Supp.2d at 462. However, several factual differences have now developed since the date of the Court's initial ruling denying the stay. First, Wonderland and Thorley are no longer direct competitors. Second, a final office action has issued against the only remaining claims in dispute in this case, and a stay would simplify several complex issues before the Court concerning the potential evidence at trial and the Proposed Jury Instructions. (Docket Nos. 178-79, 186, 194, 205, 210, 213, 217, 219-20, 224, 226, 228). Third, although discovery is complete and this case was set for trial, all of the Court's pretrial rulings remain in effect, and a new trial date can be set as soon as the Patent Trial and Appeal Board issues a final written decision, and the time for appeal has expired or any appeal has terminated, which includes appeals to the Federal Circuit.[7] See Bettcher Indus., Inc. v. Bunzl USA, Inc., 661 F.3d 629, 644-45 (Fed. Cir. 2011). The Court also finds it troubling that Wonderland urges the Court to become part of a "race to the Federal Circuit" against the reexamination proceedings at the PTO.[8] See Motion Hearing Tr. 38:18-20 (Jan. 27, 2014).

A. Undue Prejudice from a Stay

With regard to the first factor, the Court strongly weighs the fact that Wonderland and Thorley are no longer direct competitors, as Wonderland has discontinued the production and sale of the Sweetpeace. In its initial ruling on Thorley's Motion for a Stay in March, 2012, the Court found that the prejudice to Wonderland due to delay as well as the direct competition between the parties weighed against the grant of a stay. See Wonderland NurseryGoods Co., 858 F.Supp.2d at 462. At oral argument at the Motion Hearing on January 27, 2014, however, counsel for Wonderland admitted that "the Sweetpeace has petered out." See Motion Hearing Tr. 13:8-14:1 (Jan. 27, 2014). He instead proffered that Wonderland expects several new future products to be developed, including the Nuna Leaf and "some new high-end gliders." Id.

Yet, counsel for Wonderland provides no evidentiary support for the impact of these new products on his assertion of direct competition between Wonderland and Thorley. As both counsel know, the Court previously reviewed in detail the methodology of Wonderland's damages expert, Mr. Hampton, [9] who concluded that "a consumer would only have had three options for high price point' infant rocking chairs (the mamaRoo, the Sweetpeace, and a Fisher Price product), and that consumers would have purchased the Sweetpeace and the Fisher Price product in proportion to their respective historical market shares." See Wonderland NurseryGoods Co., 2013 WL 6328772, at *3. Thus, other than the Sweetpeace, Mr. Hampton offered only two options for consumers looking to purchase a baby rocker within the "high price point" infant rocking chair market; he does not mention the Nuna Leaf or a high-end glider. Id.

Mr. Hampton further opined that there were only "two products in the alternative swing market with a price above a target price point, the mamaRoo and the Sweetpeace." Id. at *4. Absent the Sweetpeace, only one option existed in the alternative swing market with a price point above the target price point, i.e., the accused mamaRoo. Id. Given the above admissions by Wonderland's counsel, see Motion Hearing Tr. 13:8-14:1 (Jan. 27, 2014), and the opinion of Wonderland's expert, see Wonderland NurseryGoods Co., 2013 WL 6328772, at *3-4, Wonderland and Thorley can no longer be seen as competitors. Moreover, Wonderland cannot argue that the high price point alternative swing market contains only the Sweetpeace and the accused mamaRoo for purposes of calculating damages, while simultaneously contending that other products compete with the accused mamaRoo to argue against a stay of the trial.

Admittedly, any delay from the current stay could be prejudicial to Wonderland, but delay alone is insufficient to establish undue prejudice. See Photoflex Products, Inc. v. Circa 3 LLC, Civ. No. 04-03715, 2006 WL 1440363 at *2 (N.D. Cal. May 24, 2006) ("The delay inherent to the reexamination process does not constitute, by itself, undue prejudice."). Wonderland proffered no evidence within the record of any undue prejudice attributable to the current stay. Had time been of the essence, Wonderland would not have waited until February 16, 2012 to file this case, (Docket No. 1 at 4), one month after Thorley filed its request for inter partes reexamination, see Right of Appeal Notice, (Docket No. 209-3 at 2), and more than three months after the date of issuance of the '609 Patent, see '609 Patent, (Docket No. 1-2).

To be sure, in its initial ruling on the stay, the Court agreed that a stay would last at least 36.2 months, see Wonderland NurseryGoods Co., 858 F.Supp.2d at 463, but reexamination of the '609 Patent has advanced since March 2012 in parallel with discovery and pretrial preparation here. Reexamination is now past the final office action and is on appeal before the Patent Trial and Appeal Board. (Docket Nos. 213 at 2; 224 at 4). And, in the event that the PTO affirms claims 19 and 20 of the '609 Patent without amendment following the final resolution of reexamination proceedings, see Fresenius USA, Inc., 721 F.3d at 1340, all of the Court's pretrial rulings remain in effect, and a new trial date can be scheduled immediately.

Wonderland also admitted that "from the beginning, " the "damages in this case [we]re minimal, in comparison to other cases." See Motion Hearing Tr. 33:21-24 (Jan. 27, 2014). To the extent that Wonderland sustains any additional damages due to infringement during the stay, it may still seek compensation for those damages. See Celorio v. On Demand Books LLC, MDL No. 12-821, 2013 WL 4506411, *1 n.1 (D. Del. Aug. 21, 2013) ("[B]ased on the nature of this suit, Celorio can be compensated through money damages, including any appropriate interest accrued during the stay."); In re Laughlin Products, Inc., 265 F.Supp.2d 525, 533 (E.D. Pa. 2003) ("[A]ny damages in this case would continue to accrue during the stay (unless tolled).").

Granting a stay on the eve of trial may seem prejudicial to both parties, each of whom have engaged in trial preparation and arranged for witnesses to testify, some of whom are foreign. However, the Court finds that the grant of a stay does not present a clear tactical advantage to Thorley because as noted above, Thorley filed its request for inter partes reexamination of the '609 Patent well before Wonderland filed the instant case in this Court. Hence, Wonderland brought this litigation knowing full well that Thorley filed a request for reexamination of the '609 Patent, and that this case could be stayed based on that reexamination.

In Rmail Limited v. Amazon.com, Inc., for instance, the district court granted a stay after finding that the "[p]laintiffs were fully aware of the co-pending California cases, even if their Texas counsel were not." Rmail Limited v. Amazon.com, Inc., Civ. No. 10-258 (E.D. Tex. Jan. 30, 2014) (Docket No. 563 at 12). "Plaintiffs clearly knew of the serious implications those cases would have on the issue of patent ownership in the present actions." Id. The court attributed any prejudice from the stay to the plaintiff's own actions, because "knowing of the allegations against them in California, [plaintiffs] chose to file the present actions (and continue to file additional actions on this group of patents)." Id. Here, reexamination proceedings at the PTO are of course different from proceedings in this Court, but Wonderland filed its complaint in this venue with full knowledge of Thorley's already-initiated inter partes reexamination of the '609 Patent and the possibility of a stay pending the results of that reexamination.

The Court also notes that this case is not the only ongoing litigation between Wonderland and Thorley. (Docket No. 211 at 2). In addition to the reexamination proceedings before the PTO, the parties in this case have engaged in other litigation in this District Court before the Honorable Mark Hornak at Civil Action 13-387, (Docket No. 183 at 2), as well as in Germany, (Docket No. 196 at 2). Ultimately, the proceedings in this case could have an impact on all of these other matters.[10] Additionally, both parties can now avoid the expenses of this trial, any post-trial motions practice, and any appeal to the Federal Circuit in this matter while the inter partes reexamination continues and this case remains stayed. See In re Bear Creek Technologies Inc., MDL No. 12-2344, 2013 WL 3789471, *3 n.8 (D. Del. July 17, 2013) ("[A] stay will foster issue simplification and maximize the likelihood that neither the [c]ourt nor the parties expend their assets addressing invalid claims.'").

Therefore, the Court finds that the first factor weighs in favor of a stay at this time.

B. Simplification of Issues for Trial

This second factor also weighs in favor of a stay. Because Wonderland has stipulated to non-infringement of claim 3 of the '609 Patent, (Docket No. 66), and the Court granted summary judgment of non-infringement of claims 12-14, see Wonderland NurseryGoods Co., 2013 WL 6731899, at *1, there are only two claims remaining at issue in this case, namely, claims 19 and 20. Both claims are under reexamination, and the grant of a stay in this case pending the final results of reexamination proceedings would eliminate or minimize several complex issues currently before the Court, because "[w]hen a claim is determined to be invalid in reexamination, the reexamination statute requires the Director of the PTO to cancel a claim that is finally determined to be unpatentable.'" See Fresenius USA, Inc., 721 F.3d at 1339. "[U]nder either the reissue or reexamination statute, if the PTO confirms the ...


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