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28 1 Because oral argument will not be of material

assistance, the court orders this matter submitted on the briefs. 

E.D. Cal. Local Rule 78-230(h).

UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF CALIFORNIA

----oo0oo----

VINOO JAIN,

NO. CIV. S-04-0889 FCD PAN

Plaintiff,

v. MEMORANDUM AND ORDER

TRIMAS CORPORATION,

Defendant.

----oo0oo----

This matter is before the court on plaintiff’s motion to

stay proceedings pending the outcome of a reexamination

proceeding in the United States Patent and Trademark Office. For

the reasons set forth below,1 plaintiff’s motion is DENIED. 

BACKGROUND

On May 5, 2004, plaintiff Vinoo Jain (“Jain”) sued defendant

TriMas Corporation (“TriMas”) alleging patent infringement of

Patent. No. 6,390,343 (“the ‘343 patent”). (Compl., filed May 5,

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2004, ¶ 1). On July 22, 2004, TriMas filed an answer and

counterclaim for a declaratory judgment declaring ‘343 invalid,

unenforceable, and not infringed by TriMas. (Countercl., filed

July 22, 2004, ¶ 1). 

On August 9, 2005, Jain filed a Request for Reexamination of

‘343 with the United States Patent Trademark Office (“USPTO”) to

reconsider the claims issued with the ‘343 patent and to

determine the true scope of the ‘343 patent. (Mot. to Stay,

filed August 12, 2005, ¶¶ 3,7). Subsequently, on August 12,

2005, Jain filed with this court a Motion to Stay Proceedings

pending the outcome of a reexamination in the USPTO. Jain

alleges that a prior art, TriMas’ Hitch-Haul carrier, “may read

on one or more of the claims of the [‘343] patent and may

invalidate such claims.” (Id. ¶ 6). 

TriMas disclosed the potentially invalidating prior

reference to Jain in a letter dated July 19, 2004, before filing

its answer. (Def.’s Opp’n to Mot. to Stay (“Opp’n”), filed Sept.

9, 2005, Ex. 1). Jain filed for reexamination of his patent with

the USPTO on August 9, 2005, more than a year after he received

TriMas’ letter. (Id.). 

On September 7, 2005, TriMas filed a motion for summary

judgment asking the court to adjudicate the issue of infringement

and grant its crossclaim for a declaratory judgment of noninfringement of the ‘343 patent. (Mot. for Summ. J., filed Sept.

7, 2005, at 2). TriMas claims that the motion for summary

judgment would dispose of Jain’s only claim of patent

infringement and render Jain’s motion to stay moot. (Opp’n at

1).

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STANDARD

The district court has the inherent authority to order a

stay pending the outcome of reexamination by the USPTO. Ethicon

v. Quigg, 849 F.2d 1422, 1426 (Fed. Cir. 1988). The court must

weigh the competing interests presented by a specific set of

facts. Gladish v. Tyco Toys, 29 U.S.P.Q.2d 1718, 1719 (E.D. Cal.

1993). In weighing the interests of the parties, the court may

consider: 1) whether the non-moving party will suffer prejudice;

2) whether there is a clear tactical disadvantage to the nonmoving party; 3) the stage in litigation, 4) whether discovery is

or will almost be completed; and 5) whether a trial date has been

set. ASCII Corp. v. STD Entm’t USA, Inc., 844 F. Supp. 1378,

1380 (N.D. Cal. 1994) (citing GPAC, Inc. v. DWW Enter., Inc., 144

F.R.D. 60, 66 (D. N.J. 1992)). 

“There is a liberal policy in favor of granting motions to

stay proceedings pending the outcome of reexamination

proceedings.” ASCII Corp., 844 F. Supp. at 1381. Reexamination

by the USPTO may further the goal of judicial economy by

eliminating the need for discovery and trial of certain issues,

and by helping the court focus on pertinent issues. Methode

Elecs., Inc. v. Infineon Techs. Corp., 2000 U.S. Dist. LEXIS

20689, at *6-7 (N.D. Cal., Aug. 7, 2000). However, courts have

denied stays where the request for reexamination came late in the

litigation proceedings, after discovery or trial preparation. 

Gladish v. Tyco Toys, Inc., 29 U.S.P.Q.2d at 1719; see Freeman v.

Minnesota Mining & Mfg. Co., 661 F. Supp. 886 (D. Del. 1987);

Toro Co. v. L.R. Nelson Corp., 223 U.S.P.Q.2d 636 (C.D. Ill.

1984).

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ANALYSIS

1. Whether the non-moving party will suffer prejudice

Defendant will suffer prejudice as a result of an order to

stay proceedings because it has continued to prosecute this case

for over a year, including filing a dispositive motion for

summary judgment. Moreover, defendant would be forced to await

resolution of this matter until the USPTO conducts its

reexamination procedure. See Toro Co. v. L.R. Nelson Corp., 223

U.S.P.Q.2d 636 (C.D. Ill. 1984) (denying patentee’s motion for

stay where suit had been pending for three and one-half years and

defendant had filed motion for summary judgment on invalidity). 

Plaintiff filed his action for patent infringement on May 5,

2004. On July 19, 2005, defendant notified plaintiff of

invalidating prior art references. (Opp’n, Ex. 1). Plaintiff

did not respond, and defendant continued to prosecute this

action, conduct discovery, and file a motion for summary

judgment. Plaintiff, however, failed to request any discovery

from defendant during the eight-month discovery period. (Opp’n

at 3). Rather, on August 9, 2005, more than a year after being

notified of the invalidating prior art references, plaintiff

brought this motion to stay the proceedings, alleging that the

prior art disclosed by defendant may invalidate one or more of

the claims of his patent. (Mot. to Stay at 2).

Reexamination by the USPTO will further prolong this matter

for defendant. The reexamination procedure can take over a year

and involve appeals before appellate tribunals of the USPTO and

Court of Appeals for the Federal Circuit. Gladish, 29 U.S.P.Q.2d

at 1720. Furthermore, defendant has filed a motion for summary

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judgment that it alleges will be dispositive of this matter. 

See Toro Co. v. L.R. Nelson Corp., 223 U.S.P.Q.2d 636. 

Subjecting defendant to additional litigation efforts and

expenses while plaintiff seeks resolution of issues that were

brought to his attention more than a year ago would be

prejudicial. Gladish, 29 U.S.P.Q.2d at 1720.

2. Whether there is a clear tactical disadvantage to TriMas

If this court grants plaintiff’s motion to stay, defendant

will suffer a clear tactical disadvantage because plaintiff would

be allowed to forestall a potential adverse decision on

defendant’s motion for summary judgment. See Toro Co. v. L.R.

Nelson Corp., 223 U.S.P.Q.2d at 637. Plaintiff has failed to

diligently prosecute his claim. Defendant thus alleges that

plaintiff, “faced with no claim of infringement, an invalid

patent, and no evidence to rebut non-infringement or validity,”

filed this motion as a dilatory tactic employed to reach a

settlement agreement. The court agrees. See Freeman v.

Minnesota Mining & Mfg. Co., 661 F. Supp. 886 (stating that stay

would be inappropriate where discovery was concluded and grant of

stay would allow the alleged infringer to use reexamination

purely as dilatory tactic).

Defendant’s situation mirrors that of the defendants in

Gladish v. Tyco Toys, Inc., 29 U.S.P.Q.2d 1718 (E.D. Cal. 1993). 

In Gladish, the defendants objected to the plaintiff’s motion to

stay because the plaintiff showed a lack of good faith in

requesting reexamination six months after he was put on notice of

the prior art that was the basis of his request for

reexamination. Id. at 1719. The court denied the motion to

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stay, stating that the defendants 

ha[d] a strong interest in concluding [the] lawsuit

without delay. . . . Plaintiff chose [the] forum,

forced [defendant] to expend time and money . . . and

now, after the litigation has progressed almost a year

and [defendant’s] discovery efforts are bearing fruit,

seeks reexamination of his patent based on prior

references known . . . since April of 1992.

 

Id. at 1720. The court concluded that the plaintiff had not

presented any evidence of hardship such that the stay should be

granted. Id.

Here, plaintiff attempts to engage in dilatory tactics. As

in Gladish, plaintiff chose the forum, forced defendant to expend

time and money, and now, after the litigation has progressed for

over a year, seeks reexamination of his patent based on prior

references known since July of 2004. Gladish, 29 U.S.P.Q.2d at

1720. Furthermore, defendant “has a strong interest in

concluding [this] lawsuit without delay.” See id. Thus,

allowing plaintiff to engineer the course of this lawsuit when he

has failed to diligently prosecute his claim would put defendant

at a clear tactical disadvantage. 

3. The stage in litigation, completion of discovery, and set

trial date 

Because this case is no longer in its incipient stages, the

scales tip heavily in favor of denying plaintiff’s motion to

stay. See Wayne Auto. Corp. v. Pearson Co., 782 F. Supp. 516

(E.D. Wash. 1991) (denying plaintiff’s motion to stay where

discovery was almost completed and a trial date had been set).

Discovery ended on June 13, 2005. Moreover, on October 25, 2004,

this court set a jury trial date of December 5, 2005. Plaintiff

has presented no evidence of hardship or inequity in being

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required to go forward with the suit as previously agreed in the

status conference. See id. Due to plaintiff’s unjustified delay

in bringing this motion, this matter is “too far along the road

to justify halting the journey.” Id.

CONCLUSION

For the foregoing reasons, plaintiff’s motion to stay

proceedings pending a patent reexamination in the United States

Patent and Trademark Office is DENIED. 

IT IS SO ORDERED.

DATED: September 27, 2005

/s/ Frank C. Damrell Jr. 

FRANK C. DAMRELL, Jr.

UNITED STATES DISTRICT JUDGE

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