Opinion
CIVIL 4:19-CV-489-SDJ
05-01-2020
SHARIDAN L. STILES v. H-E-B, LP
ORDER
SEAN D. JORDAN, UNITED STATES DISTRICT JUDGE
Before the Court is Defendant H-E-B, LP's Opposed Motion to Stay. (Dkt. #18). Plaintiff Sharidan Stiles has alleged that H-E-B, LP sells at least three different razors that infringe three patents she owns: the Ardell Pro Brow Precision Shaper, the KISS Beautiful Tool Kit Grooming, and the Onyx Professional Details Matter Brow Razor. H-E-B, LP has requested that the Court stay the entirety of the case pending the outcome of Stiles v. Walmart Stores, Inc. et al., E.D. Cal. Case No. 14-cv-2234-KJM-DMC (the “California action”). In the California action, Ms. Stiles asserts two of her patents against several other retailers and against American International Industries, the manufacturer of the Ardell Pro Brow Precision Shaper. Ms. Stiles has agreed to the motion inasmuch as it applies to the Ardell Pro Brow Precision Shaper, a razor manufactured by American International Industries.
U.S. Patent No. 9,707,689 (the “'689 patent”) is not asserted in the California action, but is asserted in this action. The '689 patent is a continuation of U.S. Patent No. 9,108,329 patent (the “'329 patent”) which is asserted in the California action. The '689 patent is at issue in another Eastern District of California action, case number 2:19-cv-01218-KJM-DMC, which has been stayed pending the outcome of the California action. See Am. Int'l Indus. v. Stiles, No. 2:19-cv-01218-KJM-DMC, 2020 WL 1984254, at *1 (E.D. Cal. Apr. 27, 2020).
H-E-B, LP has agreed to be bound by any ruling against American International Industries “as to validity, Markman, and infringement (i.e., whether certain of AI's disposable razors, namely The Salon Perfect Precision Shaper and the Ardell Brow Precision Razor, read on the asserted claims in the [California Action] without waiving the right to appeal.” (Dkt. #18-2). H-E-B, LP has also demanded indemnity from American International Industries. Id. However, H-E-B, LP has not, and indeed cannot, agree to be bound by the same terms for the other accused products in this case, the KISS Beautiful Tool Kit Grooming and the Onyx Professional Details Matter Brow Razor. The KISS and Onyx products are not a part of the patent infringement claims in the California Action. KISS and Onyx are involved in the antitrust claims at issue in the California action, which are not at issue here. Ms. Stiles opposes a stay of the present action as it applies to the KISS and Onyx products.
A court has broad discretion in deciding whether to stay a proceeding. The 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.” Landis v. N. Am. Co., 299 U.S. 248, 254, 57 S.Ct. 163, 166, 81 L.Ed. 153 (1936). The Federal Circuit has recognized that “litigation against or brought by the manufacturer of infringing goods takes precedence over a suit by the patent owner against customers of the manufacturer.” Katz v. Lear Siegler, Inc., 909 F.2d 1459, 1464 (Fed. Cir. 1990).
As the parties have agreed, and the manufacturer of the Ardell Pro Brow Precision Shaper is a party involved in the California action, the Court agrees that this action with regard to products manufactured by American International Industries should be stayed pending the outcome of the California action.
While KISS and Onyx's products, the KISS Beautiful Tool Kit Grooming and the Onyx Professional Details Matter Brow Razor, are not part of the patent infringement claims in the California Action, the patents at issue are the same or are a continuation of one of the original patents at issue. “Under the first-to-file rule, when related cases are pending before two federal courts, the court in which the case was last filed may refuse to hear it if the issues raised by the cases substantially overlap.” Cadle Co. v. Whataburger of Alice, Inc., 174 F.3d 599, 603 (5th Cir. 1999). “The rule does not, however, require that cases be identical. The crucial inquiry is one of ‘substantial overlap'.” Save Power Ltd. v. Syntek Fin. Corp., 121 F.3d 947, 950 (5th Cir. 1997). Solely on the issues of claim construction and validity contentions, the Court finds that there is substantial overlap. Both actions involve the same Plaintiff, the patents at issue are the same or from the same family, the same type of technology is at issue, and the accused products are similar. Judicial economy dictates that there is no need for simultaneous claim construction hearings and validity inquiries when the matter will be properly and fully litigated in the Eastern District of California.
As has been discussed, the '689 patent is not asserted in the California action, however, it is a continuation of the '329 patent which is at issue in the California action. American International Industries and Ms. Stiles have stayed a declaratory judgment action regarding the '689 patent pending the outcome of the California action. See Stiles, 2020 WL 1984254, at *1.
The Court, therefore, GRANTS in part Defendant's motion to stay. (Dkt. #18). It is, therefore, ORDERED that this civil action is stayed pending resolution of validity contentions and any claim construction in the California action. It is further ORDERED that, solely with regard to the Ardell Pro Brow Precision Razor, this action is stayed pending infringement determinations in the California Action.
In addition, it is hereby ORDERED that the parties file joint status reports with this Court every 90 days concerning the progress of proceedings in the California action. It is further ORDERED that the parties also file with this Court a joint status report within 30 days of any decision on the dispositive motions in the California action. All other existing deadlines and hearing dates in this action are VACATED until the stay is lifted.
So ORDERED and SIGNED.