United States District Court, N.D. Ohio, Eastern Division
MEMORANDUM OF OPINION AND ORDER [RESOLVING ECF NO.
Y. Pearson United States District Judge.
Oatey Co. moves the Court to stay proceedings pending the
United States Patent and Trademark Office's
(“USPTO”) ex parte reexamination of
patent claims related to those brought in this action.
ECF No. 16. Plaintiff/Counter-Defendant Golden Rule
Fasteners filed a response in opposition (ECF No.
18), and Oatey replied (ECF No. 20). For the
reasons stated in this Order, Oatey's motion is granted.
initial Complaint, filed February 14, 2019, Golden Rule
asserted claims based on three related patents: United States
Patent Nos. 8, 141, 303 (the “'303 Patent”);
8, 534, 002 (the '002 Patent”); and 8, 464, 475
(the “'475 Patent”). ECF No. 1 at
PageID#: 1. The '475 Patent application was a
continuation of the '002 Patent application, which was,
in turn, a continuation of the '303 Patent application.
Id. at PageID#: 2.
three related patents describe a “pipe flashing
apparatus and method, ” more specifically, a
weather-proof collar that can be placed around rooftop pipes
of varying diameters. ECF No. 1-1 at PageID#: 19;
ECF No. 1-2 at PageID#: 28; ECF No. 1-3 at
PageID#: 37. All patents describe that collar as having
a “conical shape, ” the “top edge” of
which is “coupled to a bottom edge, ” and a
rectangular “foot” coupled to the bottom edge of
the collar, to be installed on the rooftop. ECF No. 1-1
at PageID#: 19; ECF No. 1-2 at PageID#: 28, 33
(“[T]he thickness and flexibility of the foot is such
that it acts as a shingle.”); ECF No. 1-3 at
PageID#: 37. The patents also describe a
“longitudinal opening” running the length of the
device that can separate and reunite, “thereby allowing
the flashing to be spread apart and placed about a
pipe.” ECF No. 1-1 at PageID#: 19; see ECF
No. 1-2 at PageID#: 28; ECF No. 1-3 at PageID#:
37. The interior of the described collar is lined with
“elastomeric material” to seal out moisture.
ECF No. 1-1 at PageID#: 24; ECF No. 1-2 at
PageID#: 33; ECF No. 1-3 at PageID#: 42.
March 6, 2019, the USPTO granted third-party Aztec Washer
Company's request for ex parte reexamination of
certain of Golden Rule's patent claims. ECF Nos.
16-4; 16-5; 16-6. Specifically,
the USPTO will reexamine the patentability of Claim 1 of the
'303 Patent, Claims 1-8, 10, and 12-15 of the '002
Patent, and Claims 1-4 and 8-9 of the '475 Patent.
ECF No. 16-5 at PageID#: 182; ECF No. 16-6 at
PageID#: 195; ECF No. 16-4 at PageID#: 168.
on March 27, 2019, Golden Rule filed an Amended Complaint in
this litigation. ECF No. 13. In the Amended
Complaint, Golden Rule dropped all allegations based on the
'303 and '002 Patents and retained only the
allegations based on Claims 5 and 6 of the '475 Patent.
Id. It stated, however, that “[w]hen [the
USPTO] examination is complete, Golden Rule will likely
assert additional claims” from the '303, '202,
and '475 Patents “in this case.” Id. at
PageID#: 102-03 n.1.
3, 2019, prior to answering the Amended Complaint,
Oatey moved to stay proceedings pending the conclusion of the
USPTO reexamination of the related patent claims. ECF No.
16. Golden Rule resists the motion to stay, arguing that
the specific claims at issue (Claims 5 and 6 of the '475
Patent) are not themselves under reexamination, and there is
therefore no reason to delay litigation. ECF No.
18. Oatey observes that the district court for
the Northern District of Mississippi recently stayed
proceedings in a related case, concluding that the pending
USPTO reexamination would clarify the issues and simplify the
litigation. See Golden Rule Fasteners, Inc. v. Neverleak
Co., L.P., No. 3:17-cv-249-MPM-JMV, 2019 WL 384003 (N.D.
Miss. Jan. 30, 2019).
have inherent power to manage their dockets and stay
proceedings.” Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1426-27 (Fed. Cir. 1988) (citing Landis v. N. Am.
Co., 299 U.S. 248, 254 (1936)). And the House of
Representatives Judiciary Committee expressly contemplated
stays of court proceedings while USPTO reexaminations were
underway. H.R. Rep. No. 96-1307(I), at 4 (1980)
(“[S]tay provisions are unnecessary in that such power
already resides with the court to prevent costly pretrial
maneuvering which attempts to circumvent the reexamination
procedure.”). “There is a liberal policy in favor
of granting motions to stay proceedings pending the outcome
of USPTO reexamination or reissuance proceedings.”
ASCII Corp. v. STD Entm't, 844 F.Supp. 1378,
1381 (N.D. Cal. 1994). Whether to grant a motion for stay
resides in the Court's informed discretion. Id.
parties agree that the Court should consider three factors in
determining whether to stay proceedings: “(1) whether a
stay would unduly prejudice or present a clear tactical
disadvantage to the non-moving party; (2) whether a stay will
simplify the issues in question and trial of the case; and
(3) whether discovery is complete and whether a trial date
has been set.” Progressive Cas. Ins. Co. v.
Allstate Ins. Co., 2011 WL 3322767, at *2 (N.D. Ohio
Aug. 2, 2011) (quoting 01 Communique Lab., Inc. v. Citrix
Sys., 2008 WL 696888 (N.D. Ohio Mar. 12, 2008) (citation
omitted). The Court also considers “whether the party
seeking the stay has done so in good faith or for the
purposes of delay.” Id.
Rule does not contend that the first and third factors weigh
against a stay. ECF No. 18 at PageID#: 274
(“[T]hese factors are neutral, or at the very most
marginally weigh in favor of a stay.”). Golden Rule
will suffer no prejudice if in the event of a stay, and the
court proceedings here are in their infancy. Additionally,
Golden Rule does not suggest that Oatey has requested the
stay in bad faith or for purpose of delay. Only the second
factor, whether a stay will simplify the issues in question
and trial of the case, merits discussion.
the two patent claims that remain at issue in this case
(Claims 5 and 6 of the '475 Patent) are not under USPTO
reexamination, and nothing more than idle speculation
suggests they might be reexamined soon. Nevertheless, the
USPTO reexamination of 20 closely-related claims has a
discernible effect on the proceedings in this Court, both in
terms of the eventual outcome of the parties' dispute and
the efficiency with which the litigation is carried out.
second factor weighs strongly in favor of a stay. Golden Rule
has already indicated its intention to persist in related
litigation “in this case” after the USPTO
reexamination concludes. ECF No. 13 at PageID#: 101-02
n.1. A stay will simplify the litigation because it will
avoid duplicative discovery, motion practice, hearings and
conferences, and related work. There is an obvious litigative
economy that ...