Opinion
No. 2:19-cv-01218-KJM-DMC
04-27-2020
AMERICAN INTERNATIONAL INDUSTRIES, Plaintiff, v. SHARIDAN STILES, Defendant.
ORDER
Before the court is the parties' joint status report and request to stay this action pending the result of dispositive motions in a related case. Joint Status Report, ECF No. 37. For the reasons described below, the court GRANTS the parties' joint request to stay the case.
I. FACTUAL AND PROCEDURAL BACKGROUND
This multi-action patent infringement dispute between plaintiff American International Industries (AII) and defendant Sharidan Stiles (Stiles) regarding the manufacture and sale of plaintiff's personal razor products has lasted nearly six years. Compl. ¶ 1, ECF No. 1. On September 25, 2014, Stiles filed a complaint in this district against plaintiff and its retailer, Wal-Mart Stores. Id. That complaint was previously before another court in this district, but it has now been related to this case and is also before this court. See Stiles v. Walmart Stores, Inc. et al., E.D. Cal. Case No. 14-cv-22345-KJM-DMC ("Main Action"); see also Order, ECF No. 15. The Main Action involves infringement claims for Stiles' U.S. Patent No. 9,108,329 and U.S. Patent No. D542,468, antitrust claims, and unfair competition claims.
On June 6 and 7, 2019, Stiles filed three actions in the Eastern District of Texas against AII's retailers: Target, CVS, HEB and Walmart. Joint Status Report at 2. Those three actions involve infringement claims for Stiles' '329 Patent, as well as the '689 Patent at issue in this action.
On July 1, 2019, AII filed the complaint in this action. Compl. at 1. AII seeks a declaratory judgment of non-infringement and invalidity of Stiles' U.S. Patent No. 9,707,689, which "is a continuation of the '329 patent at issue in the Main Action." Joint Status Report at 2; see also Compl. ¶ 9.
II. LEGAL STANDARD
A district court has the authority to issue a discretionary stay of a case pending before it "by virtue of its inherent power to control the progress of the cause so as to maintain the orderly processes of justice." Ryan v. Gonzales, 568 U.S. 57, 74 (2013) (quoting Enelow v. New York Life Ins. Co., 293 U.S. 379, 382 (1935)); see also Landis v. N. Am. Co., 299 U.S. 248, 254 (1936) (Power to stay is "incidental to the power inherent in every court to control the disposition of the causes on its docket with economy of time and effort for itself, for counsel, and for litigants."). Whether to stay a case is an "exercise of judgment, which must weigh competing interests and maintain an even balance." Landis, 299 U.S. at 254-55.
III. DISCUSSION
As the parties state in the Joint Status Report, the '329 Patent in the Main Action and the '689 Patent here are related. Joint Status Report at 3. The '689 Patent here is "directed to a razor for removing unwanted hair from the body and is a continuation patent claiming priority to U.S. Patent Application Number 11/775,688 issued as U.S. Patent No. 9,108,329 ("the '329 Patent") on August 18, 2015." Compl. ¶ 11. As a continuation of the '329 Patent, the '689 Patent is identical to the '329 Patent and the patent claims for both "are substantially similar in scope." Id. /////
The parties argue these similarities show that questions "in the Main Action relating to validity of Stiles' '329 Patent and infringement of the '329 Patent by the 'Ardell Precision Shaper' may significantly impact or even moot the claims at issue in the present action." Joint Status Report at 3. As a result, the parties agree the dispute about the '329 Patent in the Main Action should go forward "prior to active litigation of the present action, in order to save substantial court and attorney resources, avoid duplication of efforts and facilitate more uniform control of the litigation." Id.
Having considered its powers "to maintain the orderly processes of justice," the court agrees with the parties' assessment of the relationship between instant action and the Main Action. Simultaneously considering dispositive motions in both actions, which regard identical patents with "substantially similar" patent claims, would waste judicial resources. Moreover, the timeline and nature of this overall dispute—one which has lasted nearly six years, involves two judicial districts in two states, and multiple actions brought by parties on opposing sides of the first complaint in 2014—calls on the court to use its discretion to help this case progress. The fact that both parties admit a stay is necessary further demonstrates the sound basis for the court granting this request. Collectively, the legal and factual reasons here merit granting this request for a stay.
IV. CONCLUSION
With good cause appearing, the court GRANTS the parties' joint request to stay these proceedings pending the dispositive motions regarding the '329 Patent in Stiles v. Walmart Stores, Inc. et al., E.D. Cal. Case No. 14-cv-2234-KJM-DMC ("Main Action"). In addition, it is hereby ORDERED the parties' file an updated joint status report with the Court within 30 days of any decision on the dispositive motions in the Main Action. All other existing deadlines and hearing dates in this action are VACATED until the stay is lifted.
IT IS SO ORDERED Dated: April 27, 2020.
/s/_________
CHIEF UNITED STATES DISTRICT JUDGE