United States District Court, D. New Jersey, Camden Vicinage
POWER SURVEY, LLC, Plaintiff, Counter Defendant: LIZA M.
WALSH, LEAD ATTORNEY, KATELYN O'REILLY, TRICIA B.
O'REILLY, CONNELL FOLEY, LLP, ROSELAND, NJ.
PREMIER UTILITY SERVICES, LLC, Defendant: JURA C. ZIBAS, LEAD
ATTORNEY, Wilson Elser, NEW YORK, NY.
COMMUNICATIONS HOLDINGS, INC., d/b/a NARDA SAFETY TEST
SOLUTIONS, Defendant: DAVID J. SHEEHAN, LEAD ATTORNEY, BAKER
HOSTETLER LLP, NEW YORK, NY; LESLEY MCCALL GROSSBERG, BAKER &
HOSTETLER LLP, PHILADELPHIA, PA.
[Docket No. 134]
E MARIE BUMB, United States District Judge.
September 23, 2013, Plaintiff Power Survey, LLC (" Power
Survey" or " Plaintiff" ) filed the Complaint
in this matter alleging that Defendants L-3 Communications
Holdings, Inc. d/b/a Narda Safety Test Solutions ("
Narda" ) and Premier Utility Services, LLC ("
Defendants" ) infringe three patents owned by Power
Survey. These patents relate to methods and systems for
detecting contact or stray voltage.
seek to stay this case pending inter partes review
(" IPR" ) of all claims of the three patents. The
Court previously denied Defendants' motion without
prejudice to renewal upon the U.S. Patent & Trademark
Office's (" PTO" ) ruling on the IPR petition
brought by Defendants. [Docket No. 84]. On November 26, 2014,
the PTO granted Defendants' petitions. Defendants'
renewed motion followed. [Docket No. 134].
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 a request for IPR
review has been granted rests within the sound discretion of
the court. See Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1426-27 (Fed. Cir. 1988)(noting that " [c]ourts
have inherent power to manage their dockets and stay
proceedings, including the authority to order a stay pending
conclusion of a PTO reexamination." ) (internal
typically apply a three-part test in determining a stay
motion. Courts consider (1) whether a stay would unduly
prejudice or present a clear tactical disadvantage to the
nonmoving 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.
Court finds that while Plaintiff may suffer some prejudice,
it will not suffer undue prejudice. First, there is no
evidence before the Court that Defendants engaged in any
delay tactic in seeking inter partes review. Indeed,
as mentioned, Defendants sought a stay earlier in
anticipation of such review. Pursuant to 35 U.S.C. §
316(a)(11), the Office must reach a final determination
regarding the validity of Plaintiff's asserted claims.
The likelihood that this matter would be tried by this
recently-assigned Court prior to that expiration date is
doubtful. No Markman hearing has been conducted; nor have any
dispositive motions been filed.
although Power Supply opposed the stay on the grounds that it
will be at a tactical disadvantage in defending its patents
in both fora, it appears that Power Supply has already begun
to defend its patents before the PTO. See, e.g., Docket No.
159. Of course, a stay here would not impose an added burden
the simplification of issues, the record demonstrates that
IPR was granted as to all claims asserted in this litigation.
As such, in the event the PTO cancels all asserted claims,
this matter would be resolved except for defendant
Narda's counterclaims. Even if only some claims are