1 2 3 4 5 6 UNITED STATES DISTRICT COURT 7 SOUTHERN DISTRICT OF CALIFORNIA 8 Case No.: 23CV2161-AGS (BLM) 9 ULRICH BOCKELMANN,
10 Plaintiff, ORDER DENYING MOTION FOR STAY OF DISCOVERY PENDING 11 v. DEFENDANTS’ FED.R.CIV.P. 12(c) MOTION 12 THERMO FISHER SCIENTIFIC, INC; LIFE
TECHNOLOGIES CORP.; DOES 1 THROUGH 13 10, [ECF NO. 39] 14 Defendants. 15 16 Currently before the Court is the Defendants’ Motion for Stay of Discovery Pending 17 Resolution of Defendants’ Motion for Judgment on the Pleadings. ECF No. 39. Defendants 18 seek an order staying discovery until the Court issues a ruling on their pending motion for 19 judgment on the pleadings. Id. at 2. Plaintiff opposes the request. ECF No. 42. For the reasons 20 set forth below, Defendants’ request to stay discovery is DENIED. 21 PROCEDURAL BACKGROUND 22 This case was initiated on November 24, 2023 when Plaintiff filed a complaint for patent 23 infringement of two patents involved in the detection of molecules for DNA sequencing. ECF 24 No. 1. Defendants filed an answer to the complaint on April 1, 2024. ECF No. 9. On May 6, 25 2024, the parties filed a joint discovery plan. ECF No. 20. On May 24, 2024, the Court issued 26 a Case Management Order regulating discovery and other pretrial proceedings in a patent case. 27 ECF No. 26. On August 30, 2024, Defendants filed a motion for judgment on the pleadings pursuant to Federal Rules of Civil Procedure 12(c) which is pending before United States District 1 Judge Andrew Schopler. ECF No. 41. 2 DEFENDANTS’ POSITION 3 Defendants seek an order from the Court staying discovery until the pending motion for 4 judgment on the pleadings [see ECF No. 41] is resolved. ECF No. 39 at 2. Defendants argue 5 that the allegations contained in the complaint, along with “Plaintiff’s agreement on allegations 6 in [Defendants’] counterclaims directly contradict patent infringement.” Id. The Rule 12(c) 7 motion “applies to all asserted claims, and is therefore dispositive if ruled in [Defendants’] favor.” 8 Id. 9 Defendants also argue that the Court has broad discretion to stay discovery pending the 10 outcome of a dispositive motion. Id. at 2-3. In addition, Defendants argue that a stay is 11 warranted because the case is in the early stages of discovery but there are upcoming discovery 12 deadlines that “would be costly to both parties” and a “waste of party resources” if the dispositive 13 motion is ruled on in favor of Defendants. Id. at 5-6, 10. 14 PLAINTIFF’S POSITION 15 Plaintiff contends that Defendants’ motion to stay mischaracterizes the motion for 16 judgment on the pleadings. ECF No. 42. Plaintiff argues that the motion actually “calls for claim 17 construction of a very technically complicated issue” in one of the patents and maintains that 18 Defendants’ “proposed claim construction is incorrect.” Id. at 1-2. Plaintiff argues that claim 19 construction is “required for the Court to rule on [the motion for judgment on the pleadings], so 20 the Court should reject the Motion to stay and allow claim construction.” Id. at 2. 21 In addition, Plaintiff contends that by seeking to stay discovery, Defendants are 22 attempting to “prevent Plaintiff from confirming facts alleged in the Complaint and detailed in 23 infringement contentions.” Id. at 3. Moreover, even if Defendants prevail on their motion, the 24 pleadings could be amended “and thus, no final resolution will be obtained.” Id. at 4. Plaintiff 25 argues that there is no reason to set aside the Court’s case management order that is based on 26 “well-established procedures” that are aimed at an “efficient resolution of patent cases.” Id. 27 / / / 1 LEGAL STANDARD 2 The Federal Rules of Civil Procedure do not automatically stay discovery when a 3 potentially dispositive motion is pending. Skellerup Indus. v. City of Los Angeles, 163 F.R.D. 4 598, 600-01 (C.D. Cal. 1995) (“Had the Federal Rules contemplated that a motion to dismiss 5 under Fed. R. Civ. P. 12(b)(6) would stay discovery, the Rules would contain a provision for that 6 effect. In fact, such a notion is directly at odds with the need for expeditious resolution of 7 litigation.”); see also N.L.R.B. v. Safeway Stores, Inc., 622 F.2d 425, 429 (9th Cir. 1980) (noting 8 that a discovery stay pending resolution of a case-dispositive motion is not automatic); Ocean 9 Garden Products Incorporated v. Blessings Inc., 2020 WL 4284383, at *3 (D. Ariz., July 27, 10 2020) (“[d]iscovery stays are not automatic.”) (quoting Optronic Techs., Inc. v. Ningbo Sunny 11 Elec. Co., 2018 WL 1569811, at *1 (N.D. Cal. Feb. 16, 2018)). A motion to stay discovery must 12 be supported by “good cause” and a “strong showing.” See Blankenship v. Hearst Corp., 519 13 F.2d 418, 429 (9th Cir. 1975). When deciding whether to grant a stay of discovery, the court 14 must consider the objectives of Fed. R. Civ. P. 1 to ensure a “just, speedy, and inexpensive 15 determination of every action.” Tradebay, LLC v. eBay, Inc., 278 F.R.D. 597, 602-603 (D. Nev. 16 2011). District courts have “wide discretion in controlling discovery.” Little v. City of Seattle, 17 863 F.2d 681, 685 (9th Cir. 1988); see also Cellwitch, Inc. v. Tile, Inc., 2019 WL 5394848, at *1 18 (N.D. Cal., Oct. 22, 2019) (“The Court has discretion to stay discovery pending the resolution of 19 dispositive motions, including motions to dismiss”). 20 The Ninth Circuit has not established a clear standard for deciding whether to stay 21 discovery when a potentially dispositive motion is pending but many federal district courts in 22 California have utilized a two-part test. Mlejnecky v. Olympus Imaging Am., Inc., 2011 WL 23 489743, at *6 (E.D. Cal. Feb. 7, 2011); see also PC Specialists, Inc. v. Micros Systems, Inc., 24 2011 WL 3475369, at *4 (S.D. Cal. Aug. 9, 2011) (“Defendant fail[ed] to address the factors the 25 Court must consider in determining whether to . . . stay discovery, , Mlejnecky, 2011 WL 26 489743, at *5-6.”). “First, the pending motion must be potentially dispositive of the entire case, 27 or at least dispositive on the issue at which discovery is aimed. Second, the court must 1 discovery.” Mlejnecky, 2011 WL 489743, at *4. If either part of the test is not met, discovery 2 should proceed. Id. This two-factor test “requires the court to take a ‘preliminary peek’ at the 3 merits of the pending, potentially dispositive motion to determine whether a stay is granted.”1 4 Cellwitch, Inc., 2019 WL 5394848, at *1 (citing Tradebay, 278 F.R.D. at 602). 5 “Other courts in the Ninth Circuit have applied a more lenient standard in determining 6 whether a motion to stay should be granted pending a resolution of a potentially dispositive 7 motion.” Tradebay, 278 F.R.D. at 602 (citing GTE Wireless, Inc. v. Qualcomm, Inc., 192 F.R.D. 8 284, 286 (S.D. Cal. 2000) (stating the court should “take a preliminary peek at the merits of the 9 allegedly dispositive motion to see if on its face there appears to be an 10 that it will be granted.” (citing Feldman v. Flood, 176 F.R.D. 651, 652 (M.D. Fla. 1997) 11 (emphasis in original))).
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1 2 3 4 5 6 UNITED STATES DISTRICT COURT 7 SOUTHERN DISTRICT OF CALIFORNIA 8 Case No.: 23CV2161-AGS (BLM) 9 ULRICH BOCKELMANN,
10 Plaintiff, ORDER DENYING MOTION FOR STAY OF DISCOVERY PENDING 11 v. DEFENDANTS’ FED.R.CIV.P. 12(c) MOTION 12 THERMO FISHER SCIENTIFIC, INC; LIFE
TECHNOLOGIES CORP.; DOES 1 THROUGH 13 10, [ECF NO. 39] 14 Defendants. 15 16 Currently before the Court is the Defendants’ Motion for Stay of Discovery Pending 17 Resolution of Defendants’ Motion for Judgment on the Pleadings. ECF No. 39. Defendants 18 seek an order staying discovery until the Court issues a ruling on their pending motion for 19 judgment on the pleadings. Id. at 2. Plaintiff opposes the request. ECF No. 42. For the reasons 20 set forth below, Defendants’ request to stay discovery is DENIED. 21 PROCEDURAL BACKGROUND 22 This case was initiated on November 24, 2023 when Plaintiff filed a complaint for patent 23 infringement of two patents involved in the detection of molecules for DNA sequencing. ECF 24 No. 1. Defendants filed an answer to the complaint on April 1, 2024. ECF No. 9. On May 6, 25 2024, the parties filed a joint discovery plan. ECF No. 20. On May 24, 2024, the Court issued 26 a Case Management Order regulating discovery and other pretrial proceedings in a patent case. 27 ECF No. 26. On August 30, 2024, Defendants filed a motion for judgment on the pleadings pursuant to Federal Rules of Civil Procedure 12(c) which is pending before United States District 1 Judge Andrew Schopler. ECF No. 41. 2 DEFENDANTS’ POSITION 3 Defendants seek an order from the Court staying discovery until the pending motion for 4 judgment on the pleadings [see ECF No. 41] is resolved. ECF No. 39 at 2. Defendants argue 5 that the allegations contained in the complaint, along with “Plaintiff’s agreement on allegations 6 in [Defendants’] counterclaims directly contradict patent infringement.” Id. The Rule 12(c) 7 motion “applies to all asserted claims, and is therefore dispositive if ruled in [Defendants’] favor.” 8 Id. 9 Defendants also argue that the Court has broad discretion to stay discovery pending the 10 outcome of a dispositive motion. Id. at 2-3. In addition, Defendants argue that a stay is 11 warranted because the case is in the early stages of discovery but there are upcoming discovery 12 deadlines that “would be costly to both parties” and a “waste of party resources” if the dispositive 13 motion is ruled on in favor of Defendants. Id. at 5-6, 10. 14 PLAINTIFF’S POSITION 15 Plaintiff contends that Defendants’ motion to stay mischaracterizes the motion for 16 judgment on the pleadings. ECF No. 42. Plaintiff argues that the motion actually “calls for claim 17 construction of a very technically complicated issue” in one of the patents and maintains that 18 Defendants’ “proposed claim construction is incorrect.” Id. at 1-2. Plaintiff argues that claim 19 construction is “required for the Court to rule on [the motion for judgment on the pleadings], so 20 the Court should reject the Motion to stay and allow claim construction.” Id. at 2. 21 In addition, Plaintiff contends that by seeking to stay discovery, Defendants are 22 attempting to “prevent Plaintiff from confirming facts alleged in the Complaint and detailed in 23 infringement contentions.” Id. at 3. Moreover, even if Defendants prevail on their motion, the 24 pleadings could be amended “and thus, no final resolution will be obtained.” Id. at 4. Plaintiff 25 argues that there is no reason to set aside the Court’s case management order that is based on 26 “well-established procedures” that are aimed at an “efficient resolution of patent cases.” Id. 27 / / / 1 LEGAL STANDARD 2 The Federal Rules of Civil Procedure do not automatically stay discovery when a 3 potentially dispositive motion is pending. Skellerup Indus. v. City of Los Angeles, 163 F.R.D. 4 598, 600-01 (C.D. Cal. 1995) (“Had the Federal Rules contemplated that a motion to dismiss 5 under Fed. R. Civ. P. 12(b)(6) would stay discovery, the Rules would contain a provision for that 6 effect. In fact, such a notion is directly at odds with the need for expeditious resolution of 7 litigation.”); see also N.L.R.B. v. Safeway Stores, Inc., 622 F.2d 425, 429 (9th Cir. 1980) (noting 8 that a discovery stay pending resolution of a case-dispositive motion is not automatic); Ocean 9 Garden Products Incorporated v. Blessings Inc., 2020 WL 4284383, at *3 (D. Ariz., July 27, 10 2020) (“[d]iscovery stays are not automatic.”) (quoting Optronic Techs., Inc. v. Ningbo Sunny 11 Elec. Co., 2018 WL 1569811, at *1 (N.D. Cal. Feb. 16, 2018)). A motion to stay discovery must 12 be supported by “good cause” and a “strong showing.” See Blankenship v. Hearst Corp., 519 13 F.2d 418, 429 (9th Cir. 1975). When deciding whether to grant a stay of discovery, the court 14 must consider the objectives of Fed. R. Civ. P. 1 to ensure a “just, speedy, and inexpensive 15 determination of every action.” Tradebay, LLC v. eBay, Inc., 278 F.R.D. 597, 602-603 (D. Nev. 16 2011). District courts have “wide discretion in controlling discovery.” Little v. City of Seattle, 17 863 F.2d 681, 685 (9th Cir. 1988); see also Cellwitch, Inc. v. Tile, Inc., 2019 WL 5394848, at *1 18 (N.D. Cal., Oct. 22, 2019) (“The Court has discretion to stay discovery pending the resolution of 19 dispositive motions, including motions to dismiss”). 20 The Ninth Circuit has not established a clear standard for deciding whether to stay 21 discovery when a potentially dispositive motion is pending but many federal district courts in 22 California have utilized a two-part test. Mlejnecky v. Olympus Imaging Am., Inc., 2011 WL 23 489743, at *6 (E.D. Cal. Feb. 7, 2011); see also PC Specialists, Inc. v. Micros Systems, Inc., 24 2011 WL 3475369, at *4 (S.D. Cal. Aug. 9, 2011) (“Defendant fail[ed] to address the factors the 25 Court must consider in determining whether to . . . stay discovery, , Mlejnecky, 2011 WL 26 489743, at *5-6.”). “First, the pending motion must be potentially dispositive of the entire case, 27 or at least dispositive on the issue at which discovery is aimed. Second, the court must 1 discovery.” Mlejnecky, 2011 WL 489743, at *4. If either part of the test is not met, discovery 2 should proceed. Id. This two-factor test “requires the court to take a ‘preliminary peek’ at the 3 merits of the pending, potentially dispositive motion to determine whether a stay is granted.”1 4 Cellwitch, Inc., 2019 WL 5394848, at *1 (citing Tradebay, 278 F.R.D. at 602). 5 “Other courts in the Ninth Circuit have applied a more lenient standard in determining 6 whether a motion to stay should be granted pending a resolution of a potentially dispositive 7 motion.” Tradebay, 278 F.R.D. at 602 (citing GTE Wireless, Inc. v. Qualcomm, Inc., 192 F.R.D. 8 284, 286 (S.D. Cal. 2000) (stating the court should “take a preliminary peek at the merits of the 9 allegedly dispositive motion to see if on its face there appears to be an 10 that it will be granted.” (citing Feldman v. Flood, 176 F.R.D. 651, 652 (M.D. Fla. 1997) 11 (emphasis in original))). In a third approach, courts have analyzed several factors on a case by 12 case basis, including 13 the type of pending dispositive motion and whether it is a challenge as a matter 14 of law or to the sufficiency of the complaint allegations; the nature and complexity of the action; whether counterclaims and/or cross-claims have been asserted; 15 whether some or all of the defendants join in the request for a stay; the posture 16 or stage of the litigation; the expected extent of discovery in light of the number 17 of parties and complexity of the issues in the case; and any other relevant circumstances. 18 19 Id. (citing Skellerup, 163 F.R.D. at 600-01). These cases find that discovery should be stayed 20 “only when there are no factual issues in need of further immediate exploration, and the issues 21 before the Court are purely questions of law that are potentially dispositive.” Id. (quoting 22 Hachette Distribution v. Hudson County News Co., 136 F.R.D. 356 (E.D. N.Y. 1991)). 23
25 1 The “preliminary peek” is not intended to prejudge the outcome of the motion. See Tradebay, 26 278 F.R.D. at 603 (“as the court in Mlejnecky recognized, taking a “preliminary peek” and 27 evaluating a pending dispositive motion puts a magistrate judge in an awkward position. The district judge will decide the dispositive motion and may have a different view of the merits of 1 DISCUSSION 2 Here, the two-part test, as well as other relevant considerations, does not support a 3 discovery stay. Initially, the “preliminary peek” at the pending motion for judgment on the 4 || pleadings reveals that it is not necessarily dispositive of the entire case. First, Plaintiff has not 5 || yet filed an opposition to Defendants’ motion for judgment on the pleadings and therefore, the 6 ||motion itself is not fully briefed. Second, some of Defendants’ arguments in the motion for 7 judgment on the pleadings refer to the inadequacy of the factual allegations as they are pled. 8 || Even if the District Court agrees that Plaintiff has not adequately alleged some, or all, of his 9 || factual allegations, the District Court has the discretion to allow Plaintiff to amend his pleadings 10 || even if the motion for judgment on the pleadings is granted. “[A]lthough Rule 12(c) does not 11 ||mention leave to amend, courts have discretion [] to grant a Rule 12(c) motion with leave to 12 ||amend.” Smith v. Credit Corp. Solutions, Inc., No. 3:20CV1295-JAH-RBB, 2022 WL 959597, at 13 || *9 (S.D. Cal. Mar. 30, 2022) (quoting Lonberg v. City of Riverside, 300 F. Supp. 2d 942, 945 14 Cal. 2004)). 15 As stated above, if either part of the two-part test is not met, discovery should proceed. 16 || Mlejnecky, 2011 WL 489743, at *6. Because the Court finds that the pending motion is not 17 necessarily dispositive of the entire action and because Plaintiff has articulated a need for 18 || discovery to oppose the pending motion or amend the complaint, the Court finds that a stay of 19 || discovery is not appropriate at this stage of the proceedings. 20 CONCLUSION 21 For the reasons set forth above, Defendants’ request to stay discovery is DENIED. 22 IT IS SO ORDERED. 23 24 Dated: 9/9/2024 lobe Mager 25 Hon. Barbara L. Major United States Maqistrate Judde 26 27 28