Opinion
Civil Action No. 03-CV-02702.
April 30, 2004
ORDER
NOW, this 30th day of April, 2004, upon consideration of Defendant Genlyte Thomas' Renewed Motion to Stay This Action Pending Resolution of the Reexamination of U.S. Patent No. 4,797,599, Which Has Now Been Allowed by the Patent Office and Memorandum of Law in Support, which motion and memorandum of law were filed March 2, 2004; upon consideration of Plaintiff Lutron Electronics Co., Inc.'s Memorandum in Opposition to Defendant Genlyte Thomas Group, LLC's Renewed Motion to Stay filed March 19, 2004; upon consideration of Genlyte Thomas' Motion for Leave to File a Reply Memorandum in Opposition to Genlyte Thomas' Renewed Motion for Stay, which motion was filed March 23, 2004; upon consideration of the Reply to Lutron's Memorandum in Opposition to Genlyte Thomas' Renewed Motion to Stay, which reply is attached to defendant's motion for leave to file a reply memorandum filed March 23, 2004; upon consideration of Plaintiff Lutron Electronics Co., Inc.'s Motion for Leave to File a Sur-Reply Memorandum in Opposition to Genlyte Thomas' Renewed Motion to Stay, which motion was filed March 23, 2004; upon consideration of Plaintiff Lutron Electronics Co., Inc.'s Sur-Reply Memorandum in Opposition to Genlyte Thomas' Renewed Motion to Stay, which sur-reply is attached to plaintiff's motion for leave to file the sur-reply filed March 24, 2004; it appearing that by Order of the undersigned dated December 24, 2004 we denied defendant's original request to stay this action pending defendant's application for re-examination of the patent at issue in this matter; it further appearing that by Order and Decision dated February 10, 2004 the United States Patent and Trademark Office granted Genlyte Thomas' request for re-examination; it further appearing that the Patent and Trademark Office will reexamine the patentability of claims 1 through 58 of plaintiff's "599" patent; it appearing that this matter is scheduled for a Markman hearing before the undersigned on May 20 and 21, 2004; it further appearing that the re-examination by the Patent and Trademark Office may result in the invalidation of a portion or all of the "599" patent,
Markman v. Westview Instruments, Inc., 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996).
IT IS ORDERED that defendant's motion for leave to file a reply brief is granted.
IT IS FURTHER ORDERED that the Clerk of Court shall file the Reply to Lutron's Memorandum in Opposition to Genlyte Thomas' Renewed Motion to Stay, which reply is attached to defendant's motion for leave to file a reply memorandum filed March 23, 2004.
IT IS FURTHER ORDERED that plaintiff's motion to file a sur-reply brief is granted.
IT IS FURTHER ORDERED that the Clerk of Court shall file Plaintiff Lutron Electronics Co., Inc.'s Sur-reply Memorandum in Opposition to Genlyte Thomas' Renewed Motion to Stay, which sur-reply is attached to plaintiff's motion for leave to file the sur-reply filed March 24, 2004.
IT IS FURTHER ORDERED that defendant's motion for stay is granted. IT IS FURTHER ORDERED that this matter is stayed until such time as the United States Patent and Trademark Office completes its re-examination of plaintiff's "599" patent. IT IS FURTHER ORDERED that the Clerk of Court shall place this matter into civil suspense and mark it closed for statistical purposes.
A motion to stay an action pending resolution of a request for reexamination is directed to the sound discretion of the court. Xerox Corp., v. 3Com Corporation, 69 F. Supp.2d 404, 406 (W.D.N.Y. 1999). For the following reasons, and in the exercise of our discretion, we grant defendant's motion for stay.
In our December 24, 2003 Order, we concluded that defendant waited too long to file its request for re-examination with the Patent and Trademark Office to stay the within proceedings at that time. However, on February 10, 2004 the United States Patent and Trademark Office issued its Order and Decision (See Exhibit 1 to defendant's renewed motion for stay) granting reexamination of plaintiff's "599" patent. Moreover, the Order and Decision questions the patentability of claims 1 through 58 of plaintiff's "599" patent.
Since our December 24, 2003 Order, both parties have filed numerous motions, including among others: plaintiff's motion to supplement the claim terms in dispute; defendant's motion in limine to exclude other claim terms; and defendant's motion to amend its answer and counterclaims. In addition, we are aware that there are discovery disputes between the parties currently pending before United States Magistrate Judge Arnold C. Rapoport. Moreover, the Markman hearing originally scheduled for March 8 and 9, 2004 was rescheduled to May 20 and 21, 2004.
There are numerous other deadlines that are fast approaching and there is uncertainty regarding the viability of plaintiff's "599" patent. While this court certainly has the authority to dispose of the parties' dispute, we conclude that the United States Patent and Trademark Office is better suited to determine the overall viability of the "599" patent based upon the re-examination already underway. The reexamination process may significantly narrow the issues before this court and any additional delay does not outweigh the benefit of having the Patent and Trademark Office make its experienced decision on the validity of the patent and the scope of the claims. See Vitronics Corporation v. Conceptronic, Inc., 36 F. Supp.2d 440, 442 (D.N.H. 1997).
Accordingly, we grant defendant's motion for stay of the proceedings. In addition, we deny, without prejudice, all the outstanding motions, including the interpretation of the disputed claim terms, until reexamination of the "599" patent is complete.
It is the sense of this Order that every 60 days plaintiffs shall advise the undersigned regarding the status of the re-examination of the "599" patent.
IT IS FURTHER ORDERED that all outstanding motions in this matter are denied without prejudice to re-present them, if necessary, after re-examination of the "599" patent is completed.