UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF OHIO

EASTERN DIVISION

Jump Rope Systems, LLC,

Plaintiff,

V. Case No. 2:18-cv-731

Coulter Ventures, LLC, Judge Michael H. Watson

Defendant. Magistrate Judge Vascura

OPINION AND ORDER

Coulter Ventures, LLC ("Defendant") moves to stay this patent

infringement case pending resolution of an inter partes review ("iPR") petition

filed with the Patent and Trademark Office ("PTO"). Mot., ECF No. 24. Jump

Rope Systems, LLC, ("PiaintifT) opposes the request. For the following reasons,

the Court GRANTS Defendant's motion to stay this case.

"[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. N. Am. Co., 299

U.S. 248, 254 (1936). This power to stay extends to patent proceedings where

there is an IPR pending before the Patent Trial and Appeal Board ("PTAB"). See

Intellectual Ventures IILLC v. Huntlngton Bancshares, Inc., Case No. 2:13-cv785,2014 WL2589420, at *2 (S.D. Ohio June 10, 2014). However, "a court

must tread carefully In granting a stay of proceedings, since a party has a right to

a determination of its rights and liabilities without undue delay." Ohio Envtl.

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Council V. U.S. Dist. Court, S. Dist. of Ohio, E. Div., 565 F.2d 393, 396 (6th Cir.

1977). "[T]he burden is on the party seeking the stay to show that there is

pressing need for deiay, and that neither the other party nor the public will suffer

harm from entry of the order." id.

When considering whether to stay a patent case pending proceedings

before the PTAB, courts have considered the foilowing factors: "[1] whether

discovery is complete and whether a trial date has been set; (2) whether a stay

will simplify the issues in question; and (3) whether a stay would unduly prejudice

or present a clear tactical disadvantage to the non-moving party." Stuart v. RustOleum Corp., No. 2:16-cv-622,2018 U.S. Dist. LEXIS 162096, at *3 (S.D. Ohio

Sept. 21, 2018) (collecting cases).

Defendant moves to stay this case pending review by the PTAB and

contends that a stay will conserve resources, narrow or eliminate the issues in

this case, and not unduly prejudice Plaintiff. Mot. to Stay, EOF No. 24.

As to the first factor. Defendant represents that a stay would be beneficial

because the parties are still in the early stages of litigation, and a stay would

conserve resources. Mot. 11, EOF No. 24. Meanwhile, Plaintiff represents that

the parties are "far beyond the early stages of litigation." Resp. 11, ECF No. 28.

Regardless of whether the parties have engaged in some discovery, the Court

finds this factor stiii weighs in favor of a stay because more discovery is still

necessary, and no trial date has been established.

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Second, Defendant contents that the IPR petitions "are likeiy to resoive the

entire iawsuit" or at ieast narrow the scope of the issues and offer guidance on

the proper construction of the claims in this case. Mot. 6, ECF No. 24. Plaintiff

points to other cases in which a stay was not granted pending an iPR to support

its contention that "a stay would serve no purpose." Resp. 8-9, ECF No. 28.

Although it is true that a court is not required to stay a case when an iPR is

pending, the Court also does not want to risk engaging in duplicative,

inconsistent, or unnecessary litigation. Accordingly, this factor weighs in favor of

a stay.

Finally, Defendant argues that a stay will not unduly prejudice Plaintiff.

Defendant maintains that Plaintiff will not suffer prejudice ifthe case is stayed

because Plaintiff has already waited six years before bringing this lawsuit, and

any harm can be remedied through monetary relief. Mot. 9-10, ECF No. 24.

Plaintiff argues that it would be prejudiced by a stay because the two companies

are competitors. Resp. 5, ECF No. 28. Regardless of whether the parties are

competitors, however. Plaintiff does not address how monetary compensation

would be inadequate. Thus, the Court finds that any potential prejudice against

Plaintiff does not outweigh the benefits of a stay.

The Court recognizes that courts both within this district and across the

country facing similar facts have arrived at different conclusions. See, e.g.,

Intellectual Ventures II LLC v. Huntington Bancshares, Inc., No. 2:13-cv-785,

2014 U.S. Dist. LEXIS 78753, at *7 {S.D. Ohio June 10. 2014) ("Case law from

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around the country supports both parties' positions regarding the proposed stay.

In other words, courts facing similar facts have both granted and denied motions

to stay."). "The issue comes down to a common-sense analysis of the

circumstances of each case." Id. at *8. in this case, the Court agrees with

Defendant that, on balance, the benefits of the requested stay outweigh the

costs.

Accordingly, the Court GRANTS Defendant's motion to stay, ECF No. 24.

This case is hereby STAYED until the conclusion of the IPR proceedings. The

parties are DIRECTED to inform the Court within THIRTY DAYS after the IPR

decision.

IT IS SO ORDERED.

MICHAEL H.WATSON, JUDGE

UNITED STATES DISTRICT COURT

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