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Lineweight LLC v. Firstspear, LLC

United States District Court, E.D. Missouri, Eastern Division

August 26, 2019




         This matter is before the Court on Defendant Firstspear, LLC's Motion to Stay the case pending the outcome of its petitions for Inter Partes Review (“IPR”) by the Patent Trial and Appeal Board (“PTAB”). (Doc. 69.) Plaintiffs oppose the motion, arguing that a stay is not appropriate and would unduly prejudice them. (Doc. 72.) Defendant filed a reply. (Doc. 76.)


         Plaintiffs filed suit on March 8, 2018, alleging that Defendant was actively engaged in selling numerous products that infringed on Plaintiff's patent for a “MOLLE COMPATIBLE LIGHTWEIGHT GARMENT, ” number 9, 173, 436 (the “ '436 Patent”). (Doc. 1.) On February 1, 2019, after several months of discovery, the parties submitted a Joint Claim Construction Chart identifying a single claim-Claim 11-and six disputed claim phrases at issue in this case. (Doc. 37.) Thereafter, the parties briefed their respective positions as to each claim phrase (Docs. 49-54, 57-60), and, on April 16, 2019, the Court held a Markman hearing at which the parties presented significant oral argument (Doc. 63).

         Two months later, on June 14, 2019, Defendant filed this motion, asking the Court to stay its ruling on claim construction. (Doc. 69.) The week before, on June 6, 2019, Defendant filed two petitions for IRP asking the PTAB to review numerous claims of the '436 Patent, including Claim 11. (Docs. 69-1, 69-2.) Defendant asserts that the PTAB's rulings would narrow the scope of this litigation and conserve resources without substantially prejudicing Plaintiffs. (Doc. 69.) Plaintiffs argue that the parties have already expended significant resources in preparing for the Markman hearing and that the PTAB has not even agreed to hear the reviews. (Doc. 72.)

         Legal Standards

         Courts have inherent discretion to control their own docket, including by staying proceedings. Clinton v. Jones, 520 U.S. 681, 706 (1997). When determining whether to grant a stay pending IPR, courts generally consider three factors: “(1) whether discovery is complete and whether a trial date has been set; (2) whether a stay of litigation will simplify the issues in question and facilitate the trial; and (3) whether a stay would unduly prejudice or present a clear tactical disadvantage for the non-moving party.” Masa LLC v. Apple Inc., No. 4:15-CV-00889-AGF, 2016 WL 2622395, at *2 (E.D. Mo. May 9, 2016) (citing Intellectual Ventures II LLC v. Commerce Bancshares, Inc., No. 2:13-CV-04160-NKL, 2014 WL 2511308, at *2 (W.D. Mo. June 4, 2014)). The burden is on the party seeking the stay to show that the action is warranted. See Brady v. Nat'l Football League, 640 F.3d 785, 794 (8th Cir. 2011) (Bye, J., dissenting) (citing Lankford v. Sherman, 451 F.3d 496, 503 (8th Cir. 2006)).


         1. The State of the Case

         Defendant argues that “the only discover that has been taken in this case relate[s] to claim construction.” (Doc. 69 at 4.) While the parties have spent the time and resources necessary to brief and argue claim construction, Defendant notes that “no discovery related to invalidity, damages, non-infringement, or any other issue has been done.” (Id.) Still left is expert testimony regarding invalidity and damages, document review, depositions, and dispositive motions. (Id.) “All of these costs can be avoided by granting a stay pending the outcome of the IPR petitions, ” Defendant argues. (Id.)

         Plaintiffs respond that the discovery necessary to present argument on the claim construction issue was substantial and that the balance of the case amounts to “a relatively simple patent case involving only one asserted claim from one asserted patent.” (Doc. 72 at 4.) Further, Plaintiffs argue that the parties' already-expended resources are a direct result of Defendant's unexplained delay in seeking IPR. (Id. at 5.) Plaintiffs note that the majority of the substantive arguments raised in Defendant's IPR petitions were present in its initial invalidity contentions, meaning Defendant knew about these issues long before the parties expended so much time and effort to prepare for the Markman hearing. (Id. at 5.)

         In reply, Defendant asserts that it waited to file with the PTAB because it hoped the parties' ongoing settlement discussions might bear fruit. (Doc. 76 at 1.) Defendant reiterates that the parties' discovery thus far has been limited to the single issue of claim construction and that allowing the PTAB to rule on its petitions could well eliminate the need for the remaining bulk of discovery. (Id. at 4-5.) It adds that no trial date has been set. (Id. at 4.)

         The Court believes that the discovery completed by the parties in advance of the Markman hearing, while substantial, is less than the amount left to do. In addition to the greater number of remaining issues to address, expert reports and depositions must still be prepared, scheduled, taken, and rebutted. A favorable ruling from the PTAB could eliminate entirely the need for that discovery and even a partial ruling could dramatically narrow the scope of that discovery. In both cases, significant resources are saved.

         The Court is cognizant of Plaintiffs' argument that the PTAB may decline to review the petitions and that the Court should not stay the case unless and until the PTAB institutes review. (See Doc. 7-8.) If the Court stays the case but the PTAB declines to review Defendants' petitions, no resources will be saved but neither will any have been wasted. If the Court does not stay the case and the PTAB institutes review, any discovery conducted between ...

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