GPAC, Inc. v. D.W.W. Enterprises, Inc.

144 F.R.D. 60, 23 U.S.P.Q. 2d (BNA) 1129, 1992 U.S. Dist. LEXIS 13040, 1992 WL 207310
CourtDistrict Court, D. New Jersey
DecidedMarch 31, 1992
DocketCiv. A. No. 90-3251(GEB)
StatusPublished
Cited by15 cases

This text of 144 F.R.D. 60 (GPAC, Inc. v. D.W.W. Enterprises, Inc.) is published on Counsel Stack Legal Research, covering District Court, D. New Jersey primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
GPAC, Inc. v. D.W.W. Enterprises, Inc., 144 F.R.D. 60, 23 U.S.P.Q. 2d (BNA) 1129, 1992 U.S. Dist. LEXIS 13040, 1992 WL 207310 (D.N.J. 1992).

Opinion

MEMORANDUM AND ORDER

WOLFSON, United States Magistrate Judge.

Presently before this Court is the defendant’s motion for a stay of the proceedings in this action pending determination of a reexamination proceeding in the United States Patent Office, United States Patent No. 4,604,1111 (hereinafter “GPAC” patent [61]*61or “111” patent). Plaintiff, GPAC, Inc. (hereinafter “GPAC”), opposed a stay in this case. This matter is being considered pursuant to Fed.R.Civ.P. 78. The Court, having considered the moving and opposition papers, and for the reasons set forth below, grants the defendant’s motion for a stay.

BACKGROUND

Plaintiff GPAC filed this patent infringement action on August 8, 1990. In its complaint, the plaintiff charged that defendants, Global Consumer Services, Inc. (hereinafter “Global”) and KRC Research Corporation (hereinafter “KRC”), were contributorily infringing, and inducing the infringement of the GPAC patent. The defendant D.W.W. Enterprises, Inc. (hereinafter “D.W.W.”) was charged with directly infringing the GPAC patent. On November 19, 1991, the Court granted plaintiff’s motion to amend the complaint to add an additional party defendant, Herbert Abrams Company, Inc. d/b/a Aramsco, and to add a count of tortious interference against Global.

The parties are currently engaged in discovery, with each of the original parties having served and answered interrogatories and document requests. Additionally, GPAC has taken depositions of four witnesses and has noted the need for further depositions in this matter.

Previously, in October, 1991, the defendants D.W.W. and KRC filed a similar motion for a stay of these proceedings pending the outcome of the re-examination proceedings in the United States Patent and Trademark Office (hereinafter “PTO”). At that time, the defendant Global did not join in the motion. This Court, by Memorandum and Order dated November 22, 1991, denied the motion to stay without prejudice on the basis that all defendants had not joined in the stay request. In the present motion, all defendants have joined in Global's request for a stay.

The history of the GPAC patent in suit merits a brief discussion since it has been subject to a prior re-examination proceeding in the PTO. In April, 1987, the president of Global, represented by Mr. Webster Harpman, filed a request to re-examine the GPAC patent in the PTO. PTO Examiner Tim Miles rejected the GPAC patent claims. Thereafter, the PTO Board of Patent and Appeals and Interferences reversed the examiner and affirmed the validity of all of the patent claims of the GPAC patent, including several new claims that were added during the course of the re-examination heading.

A second request for re-examination of the GPAC patent was filed in the PTO on November 22, 1990 by Jimmy Wayne Simpson, Sr. The re-examination transmittal form request indicated that Mr. Simpson was represented by Mr. Webster Harpman, the same individual who represented defendant Global in the first reexamination. By strange coincidence, this second re-examination request was assigned to the same examiner, Tim Miles, who previously granted the first re-examination. On January 21, 1991, Examiner Miles granted the second re-examination request. In granting the request, Examiner Miles noted that a “substantial new question of patentability affecting Claims 1 through 29 of the United States Patent No. 4,604,111 is raised by the request for a reexamination”. On July 31, 1991, a First Office Action in the re-examination rejected Claims 1 through 29 of the patent in suit. Thereafter, GPAC added new Claims 30 through 43. A Final Office Action was issued by Examiner Miles on December 4, 1991 rejecting all Claims 1 through 43. GPAC filed its Notice of Appeal to the Board on January 3, 1992.2 The plaintiff approximates that the PTO appeal process concerning the second re-examination of the GPAC patent will take about nine [62]*62months and expects that the Board will reach its decision toward the end of 1992. Therefore, a final determination by the PTO as to the validity of the GPAC patent is forthcoming.

Both plaintiff and defendants have informed this Court that the GPAC patent is involved in other actions currently pending throughout the United States. In the United States District Court for the Northern District of Iowa, GPAC has filed suit against a customer of the defendant Global, Environmental Management Services, Inc. (“EMS”). There, the defendants renewed an earlier motion to request a stay (the earlier motion having been denied) and the Iowa Court granted a stay pending resolution of the re-examination proceeding. A second case, presently pending in the United States District Court for the District of Delaware, GPAC v. Performance Abatement, Docket No. 89-274, also involves the same GPAC patent in issue. A similar motion for stay of the proceedings was granted February 11, 1992. In that matter, GPAC did not oppose a stay because substantially all discovery in the Delaware case had been completed with the exception of minor discovery matters. A third suit filed by GPAC against the trade association, NIAC, is presently pending in the United States District Court for the District of Columbia. It does not appear that this matter has been stayed nor has a stay been requested to date.

DISCUSSION

The re-examination statutes do not expressly provide for a stay of court proceedings because “it is believed by the committee that stay provisions are unnecessary in that such power already resides with the court.” Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1426 (Fed.Cir.1988) quoting 1980 U.S.C.C.A.N. 6460, 6463. Specifically, Congress noted its approval of district courts liberally granting stays within their discretion:

The bill does not provide for a stay of court proceedings. It is believed by the committee that stay provisions are unnecessary in that such power already resides with the court to prevent costly pre-trial maneuvering which attempts to circumvent the re-examination procedure (emphasis in the original).

Gould v. Control Laser Corp., 705 F.2d 1340, 1342 (Fed.Cir.1983), cert. den. 464 U.S. 935, 104 S.Ct. 343, 78 L.Ed.2d 310 (1983), citing H.R.Rep. No. 1307, Part I, 96th Congress, 2d Sess. (1980), U.S.C.C.A.N. 6460, 6463.

Thus, the courts have the inherent power to control and manage their dockets and stay proceedings, see Landis v. North American Company, 299 U.S. 248, 254, 57 S.Ct. 163, 166, 81 L.Ed. 153 (1936), including the authority to order a stay pending conclusion of a PTO re-examination. Control Laser Corp., supra, 705 F.2d at 1342. See also Amersham International PLC v. Corning Glass Works, 618 F.Supp. 507, 509 (E.D.Mich.1984); Rohm & Hass v. Mobile Oil Company, 462 F.Supp. 732, 734 (D.Del.1978) (a motion to stay an action pending the resolution of a related matter in the United States Patent and Trademark Office is directed to the sound discretion of the court).

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144 F.R.D. 60, 23 U.S.P.Q. 2d (BNA) 1129, 1992 U.S. Dist. LEXIS 13040, 1992 WL 207310, Counsel Stack Legal Research, https://law.counselstack.com/opinion/gpac-inc-v-dww-enterprises-inc-njd-1992.