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Ei Du Pont De Nemours & Co v. Macdermid Printing Solutions LLC

July 23, 2012


The opinion of the court was delivered by: Bongiovanni, Magistrate Judge


Presently before the Court in this patent infringement action is Defendant MacDermid Printing Solutions, LLC's ("MacDermid") motion to stay this matter pending inter partes reexamination by the United States Patent and Trademark Office ("PTO") of U.S. Patent No. 6,797,454 B1 (the "'454 patent") [Docket Entry No. 93]. Plaintiff EI Du Pont De Nemours & Co. ("DuPont") opposes MacDermid's motion. While oral argument was requested, the Court considers MacDermid's motion without oral argument pursuant to FED.R.CIV.P. 78. For the reasons set forth more fully below, MacDermid's motion is GRANTED and this civil action shall be stayed pending the PTO's reexamination of the '454 patent.

I. Background

DuPont filed its Complaint against MacDermid on February 12, 2010, alleging infringement of DuPont's '454 patent, titled "Method and Apparatus for Thermal Processing a Photosensitive Element." (Complt. ¶¶ 5-7; Docket Entry No. 1). While the Complaint was initially filed in the District of Connecticut, the case was transferred to this Court, over DuPont's objection, on June 16, 2010. (Ruling on Defendant's Motion to Transfer; Docket Entry No. 39). In determining that New Jersey, rather than Connecticut, is the more convenient forum for litigating DuPont's infringement claims concerning the '454 patent, the District of Connecticut noted that DuPont had "previously filed patent infringement claims with respect to other patents in the flexography industry in the [D]istrict of New Jersey" and that "[w]hile those claims are not identical to the claims here, the patents at issue in New Jersey involve similar issues of technology to which the New Jersey court has spent considerable time familiarizing itself." (Id. at 8). The District of Connecticut's reference to "previously filed patent infringement claims" concerned the claims brought by DuPont against MacDermid in E.I. Du Pont de Nemours and Company v. MacDermid, Inc., et al., District of New Jersey Civil Action No. 06-3383 (MLC) (the "06-3383 Action"). In that case, DuPont alleges infringement of the following two patents: U.S. Patent No. 6,171,758 B1 (the "'758 patent), titled "Dimensionally Stable Flexographic Printing Plates," and U.S. Patent No. 6,773,859 B2 (the "'859 patent"), titled "Process for Making a Flexographic Printing Plate and a Photosensitive Element for Use in the Process." (Complt. in the 06-3383 Action ¶¶ 5-8; 13-16)

After this matter was transferred here, this Court contacted the parties regarding the schedule to be entered in this case. While the Court informed the parties that It would not require the implementation of a discovery schedule designed to put this case on track with the 06-3383 Action, It did expect an abbreviated schedule in light of the information already exchanged between the parties. After the District Court ruled on MacDermid's motion to dismiss, the Court entered such a schedule, which essentially would have had the parties ready to go forward with a Markman hearing at the end of July 2012. (See 10/13/2011 Order; Docket Entry No. 84). The Court subsequently entered another scheduling order, which set forth the relevant post-Markman schedule up until and including the submission of dispositive motions. (See 4/16/2012 Order; Docket Entry No. 87].

The parties remained largely on schedule until May 2012, when the parties' opening Markman briefs were due. At that juncture, after one joint request for an extension of time to file opening Markman briefs was granted (see 5/10/2012 Order; Docket Entry No. 88), MacDermid requested additional adjournments, which DuPont opposed. Essentially, MacDermid sought to stay these proceedings pending the PTO's determination of whether to grant MacDermid's request for inter partes reexamination of the '454 patent. Though the Court denied that request, the Court did further extend the deadline for filing opening Markman briefs. (See 5/14/2012 Order; Docket Entry No. 89; 5/15/2012 Order; Docket Entry No. 90). During the adjournment period, the PTO granted MacDermid's request for inter partes reexamination of the '454 patent. (PTO Inter Partes Reexamination Order of 5/25/2012, attached as Ex. K to the Decl. of Donald

A. Robinson, Esq.; Docket Entry No. 93-7). In light of the PTO's decision to grant MacDermid's request for inter partes reexamination of the '454 patent, the Court again adjourned the deadline for filing opening Markman submissions in order to give MacDermid an opportunity to formally move to stay these proceedings pending the PTO's reexamination of same. (See 6/6/2012 Order; Docket Entry No. 92). Aware of DuPont's desire to move this case forward and not wanting to delay these proceedings longer than necessary, the Court set an expedited briefing schedule for MacDermid's motion to stay. (Id.) The instant motion followed.

II. Analysis

It is well-established that "the power to stay proceedings 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. North Am. Co., 299 U.S. 248, 254, 57 S.Ct. 163, 81 L.Ed. 153 (1936). As such, the decision to stay a patent case in which the PTO has granted a request to re-examine the patent-in-suit rests within the sound discretion of the district court. See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1426-27 (Fed. Cir. 1988) (noting that "[c]courts have inherent power to manage their dockets and stay proceedings, including the authority to order a stay pending conclusion of a PTO reexamination.") (internal citations omitted).

Staying a matter pending a reexamination by the PTO comes with both costs and benefits. Advantages include:

(1) a review of all prior art presented to a court by the PTO, with its particular expertise; (2) the potential alleviation of numerous discovery problems relating to prior art by PTO examination; (3) the potential dismissal of a civil action should invalidity of a patent by found by the PTO; (4) encouragement to settle based upon the outcome of the PTO reexamination; (5) an admissible record at trial from the PTO proceedings which would reduce the complexity and length of the litigation; (6) a reduction of issues, defenses and evidence during pre-trial conferences; and (7) a reduction of costs for the parties and a court.

Eberle v. Harris, Civil Action No. 03-5809 (SRC), 2005 WL 6192865, *2 (D.N.J. Dec. 8, 2005) (citing GPAC, Inc. v. D.W.W. Enterprises, Inc., 144 F.R.D. 60, 63 (D.N.J. 1992)). There are, of course, also disadvantages to the imposition of a stay. For example, "a stay in litigation inevitably causes further delay in an already lengthy process and could potentially harm [the party opposing the stay]. [The opposing party] ha[s] a right to have their day in court, and more and more in American jurisprudence the goal is to have that day sooner rather than later." Id. Nevertheless, while courts balance the costs and benefits associated with staying a matter pending reexamination of a patent by the PTO, "courts have noted that granting a stay pending reexamination is favored." ICI Uniqema, Inc. v. Kobo Products, Inc., Civil Action No. 06-2943 (JAP), 2009 WL 4034829, *1 (D.N.J. Nov. 20, 2009).

In determining whether to stay a matter pending reexamination by the PTO, courts have developed a three-part test. Under this test, courts consider "'(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.'" Stryker Trauma S.A. v. Synthes (USA), Civil Action No. 01-3879 (JLL), 2008 WL 877848, *1 (D.N.J. March 28, 2008) (quoting Xerox Corp. v. 3Com Corp., 69 F.Supp.2d 404, ...

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