Joseph P. Lasala, Esq., McELROY, DEUTSCH, MULVANEY & CARPENTER, LLP, Morristown, New Jersey and George Pazuniak, Esq., PAZUNIAK LAW OFFICE, Wilmington, Delaware Counsel for Plaintiff.
Eugene G. Reynolds, Esq., MULLEN & REYNOLDS, LLC, Morris Plains, New Jersey and Louis C. Dujmich, Esq., OSTRELENK FABER LLP, New York, New York Counsel for Defendant.
JOSEPH E. IRENAS, District Judge.
On July 16, 2003, Plaintiff Artemi Ltd. initiated this patent infringement action against Defendant Safe-Strap Co., Inc. Several months later, upon the parties' consent, the Court stayed the case pending the United States Patent and Trademark Office's ("USPTO") decision on reexamination and reissue of the patent at issue. The USPTO issued its decision on July 26, 2011. Almost a year and a half after the USPTO proceedings concluded, Artemi filed the instant Motion to Reopen this case. Artemi also seeks to amend the Amended Complaint to reflect the USPTO's decision. Safe-Strap opposes both Motions.
For the reasons stated herein, the Motion to Reopen will be granted, and the Motion to Amend will be granted in part and denied without prejudice in part.
Paul Artemi is the owner and managing director of Plaintiff Artemi Ltd. Mr. Artemi invented the "Spacemaker, " which is a hook used by garment retailers and distributors to increase the amount of garments that can be hung on a rail. The USPTO issued U.S. Patent 5, 584, 455 (the "455 Patent") (Dujmich Decl. Ex. 1) to Artemi on December 17, 1996. According to Aretmi, the Spacemaker is used by well-known national clothing retailers, including Banana Republic and Kohl's.
On May 10, 2002, Artemi submitted the 455 Patent for ex parte reexamination by the USPTO, and on August 8, 2002, the USPTO granted the request for reexamination.
While the reexamination proceeding was pending, on July 16, 2003, Artemi filed suit against Safe-Strap alleging that Safe-Strap's apparel hook, known as the "Hanger Under, " infringed upon the claims of the 455 Patent. The case was assigned to U.S. District Judge Pisano. Safe-Strap answered the Amended Complaint on October 1, 2003.
Shortly thereafter, in light of the reexamination proceedings, and at the joint request of the parties, Judge Pisano entered an Order staying and administratively terminating the action "pending completion of the ongoing reexamination proceeding before the USPTO pertaining to [the 455 Patent]." (Dkt. Entry No. 14) The Order further stated that Artemi "shall notify the Court and [Safe-Strap] when said reexamination proceeding is completed and the matter can be reinstated to the active docket." Id . That same day, Judge Pisano also entered an Administrative Termination Order terminating the action "without prejudice to the right of the parties to reopen the proceedings for good cause shown." (Dkt. Entry No. 15)
In the following years, Artemi continued to pursue reexamination, and then reissue, before the USPTO.
These prolonged proceedings concluded with the issuance of U.S. Reissue Patent 42, 568 (the "RE568 Patent") (Exhibit 1 to Proposed Second Amended Complaint) on July 26, 2011. The reissue patent has ten claims: Claim 2 and Claims 8-16. Relevant to the instant Motions, Artemi concedes that Claims 8-16 of the RE568 Patent are entirely new (i.e., not substantially identical to any of the claims of the 455 Patent). The parties dispute whether Claim 2 of the RE568 Patent is substantially identical to Claim 2 of the 455 Patent.
On June 24, 2011, Artemi's counsel sent a letter to Safe-Strap's counsel stating that the RE568 Patent was about to be issued and that Artemi intended to seek to reopen this case. (Pazuniak Decl. Ex. F) On July 1, 2011, Safe-Strap's counsel responded that Safe-Strap would oppose any effort by Artemi to revive the litigation. (Dujmich Decl. Ex. 6)
On December 27, 2012, seventeen months after the issuance of the RE568 Patent, Artemi's counsel wrote to Judge Pisano advising that the reexamination proceeding was completed and requesting that the case be reinstated to the active docket. The case was then reassigned to the undersigned.
As indicated supra, presently pending are Artemi's Motion to Reopen and Motion to Amend the Amended Complaint. Safe-Strap opposes both Motions, asserting that the case should not be reopened because of the seventeen-month delay in seeking to reopen the case, and ...