United States District Court, E.D. Pennsylvania
For DESTINATION MATERNITY CORPORATION, Plaintiff: FRANCIS W. RYAN, MELISSA A. REINCKENS, TAMAR Y. DUVDEVANI, LEAD ATTORNEYS, PRO HAC VICE, DLA PIPER LLP US, NEW YORK, NY; MATTHEW CAPLAN, LEAD ATTORNEY, PRO HAC VICE, DLA PIPER LLP (U.S.), LOS ANGELES, CA; PAUL A. TAUFER, LEAD ATTORNEY, DLA PIPER RUDNICK GRAY CARY US, LLP, PHILA, PA.
For TARGET CORPORATION, Defendant: ANDREW F. JOHNSON, LEAD ATTORNEY, PRO HAC VICE, FAEGRE BAKER DANIELS LLP, MINNEAPOLIS, MN; DANIEL M. LECHLEITER, MATTHEW C. ENNIS, R. TREVOR CARTER, LEAD ATTORNEYS, PRO HAC VICE, FAEGRE BAKER DANIELS LLP, INDIANAPOLIS, IN; FRANCIS J. GREY, JR., LAVIN COLEMAN O'NEIL RICCI FINARELLI & GRAY, PHILADELPHIA, PA; SEAN L. CORGAN, LAVIN O'NEIL RICCI CEDRONE & DISIPIO, PHILADELPHIA, PA.
For ELIZABETH LANGE, LLC, Defendant: R. TREVOR CARTER, LEAD ATTORNEY, DANIEL M. LECHLEITER, FAEGRE BAKER DANIELS LLP, INDIANAPOLIS, IN; ANDREW F. JOHNSON, FAEGRE BAKER DANIELS LLP, MINNEAPOLIS, MN; FRANCIS J. GREY, JR., LAVIN COLEMAN O'NEIL RICCI FINARELLI & GRAY, PHILADELPHIA, PA; SEAN L. CORGAN, LAVIN O'NEIL RICCI CEDRONE & DISIPIO, PHILADELPHIA, PA.
ANITA B. BRODY, J.
Plaintiff Destination Maternity Corporation (" DMC" ) brings suit against Defendants Target Corporation (" Target" ) and Elizabeth Lange, LLC for infringement of U.S. Patent Nos. RE43,531 (the " '531 Patent" ) and RE43,563 (the " '563 Patent). Target moves to stay the litigation pending inter partes review by the United States Patent and Trademark Office (" PTO" ). For the reasons set forth below, I will grant Target's motion to stay the litigation.
On October 4, 2012, DMC filed suit against Defendants for allegedly infringing the '531 Patent and the '563 Patent. Both patents relate to maternity pants having a flexible belly panel that can be worn during different stages of pregnancy and different stages of postpartum body changes. The patents have a common priority date
of May 31, 2007 and will naturally expire on August 26, 2027.
On January 23, 2013, the Court held a pretrial scheduling conference pursuant to Federal Rule of Civil Procedure 16. Following the Rule 16 conference, the Court issued a scheduling order that established the following deadlines: September 25, 2013 - close of fact discovery; December 13, 2013 - close of expert discovery; and January 29, 2014 - dispositive motions due. ECF No. 33. The scheduling order did not include deadlines for Markman briefs and a Markman hearing because the parties agreed that no claim construction was necessary in the case. Additionally, no trial date was set.
On May 6, 2013, DMC served its Disclosure of Asserted Claims and Infringement Contentions (" Infringement Contentions" ), which identified, for the first time, the specific claims of the patents that DMC asserts against Defendants.
On August 27, 2013, Target filed petitions for inter partes review, asking the Patent Trial and Appeal Board (" PTAB" ) to institute inter partes review proceedings to invalidate all 29 claims that DMC asserts against Defendants. The following day, Target filed its motion to stay the litigation in this case pending the resolution of the petitions for inter partes review. At the time Target filed its motion to stay, fact discovery was not complete and expert discovery and depositions had not begun.
On September 13, 2013, DMC filed a response in opposition to Target's motion to stay. In the response, DMC asserted that the case was already at an " advanced stage" because the parties had conducted significant discovery, including DMC's production of over 34,000 pages of documents to Defendants. Pl.'s Resp. 16. Additionally, DMC represented that " the vast majority of documentary discovery is complete." Id. at 4. However, five days later, the Court approved the parties' joint motion to amend the scheduling order to extend the deadlines for the close of fact discovery until October 25, 2013 and the close of expert discovery until January 14, 2014. ECF No. 62. Moreover, within two weeks ...