St. Clair Intellectual Property Consultants Inc. v. Fujifilm Holdings Corporation et al, No. 1:2008cv00373 - Document 46 (D. Del. 2009)
Court Description: MEMORANDUM OPINION and ORDER DENYING 24 MOTION to Stay filed by Fuji Photo Film USA Inc., Fujifilm Holdings Corporation, Fujifilm USA Inc., Fujifilm America Inc., Fuji Photo Film Co. Ltd., FUJIFILM Corporation. Signed by Judge Leonard P. Stark on 1/27/09. (ntl)
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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE ST. CLAIR INTELLECTUAL PROPERTY CONSULTANTS, INC., aintiff, v. Civil Action No. 08-373-JJF-LPS FUJIFILM HOLDINGS CORPORATION,: et . , Defendants. Ronald J. Schutz, Esquire; Becky R. Thorson, Esquire; Annie Huang, Esquire; David B. Zucco, Esquire; Busola A. Akinwale, Esquire and A. Northrop, Esquire of ROBINS, KAPLAN, MILLER & CIRESI L.L.P., Minneapolis, Minnesota. Frederick L. Cottrell, III, Esquire and Chad M. Shandler, Esquire of RICHARDS, LAYTON & FINGER, Wilmington, Delaware. Attorneys for Plaintiff. Steven J. Routh, Esquire and Sten A. Jensen, Esquire of ORRICK, HERRINGTON & SUTCLIFFE LLP, Washington, D.C. Steven J. Balick, Esquire; John G. Day, Esquire and Tiffany Geyer Lydon, Esquire of ASHBY & GEDDES, Wilmington, Delaware. Attorneys for Defendants. MEMORANDUM OPINION January~, Wilmington, 2009 aware Pending before by Court is a Motion To Stay (D.I. 24) filed Fuji ifilm Holdings Corporat Photo 1m Co., Ltd., Fuji Photo U. S. A., Inc., and Fuj i "Fuji 1m"). 1m Corpo 1m U.S.A., Inc., 1m America, Inc. For the reasons l scus ifilm (collectively, , the Court will deny ifilm's Motion. I. THE PARTIES' CONTENTIONS This is the second action Property Consultants, Inc. patent infringement. Film Co., Ltd. I' led by St. air Intellectual (" St. Clair") against Fuj ifilm for first action, St. Clair v. Fuji Photo et al., Civil Action No. 03 41-JJF ("Fuji 1m In), was tried to a jury and resulted in a verdict in favor of St. Clair in the amount of approximately $3 million. is currently in post-tr brie 59(e) motion, while Fujifilm has Fujifilm I : St Clair has filed a led no post-t e al motions. In this action, St. Clair asserts the same four Roberts patents it asserted against Fuji 1m Fuji 1m I, and seeks damages against Fujifilm for infringement from the close of the damages pe od in Fuji 1m I until Stay, Fuji 1m contends that the continued 1 action will prejudice Fuji 1m because present. its Motion To igation of will be required to litigate simultaneously this action and the appeal in Fuji is ifilm I. 1m points out that St. Clair has sued 53 other defendants 1 in four other actions pending in this Court, and Fujifilm is the only party who litigate two time. substantial hards s patent infringement actions at the same that, by contrast, St. Clair will Fujifilm no prejudice if a s is granted, because against the other defendants. this action issues for trial the resources of both the parties and equit e, St. Clair s cted appeal in Fuji Court. the balance of the s against a stay in Clair contends that it will suf action is s because Fuji liability for s be delayed. s action, largely discove St. r continued prejudice if 1m continues to will is ly infringe ingement will continue to St. Clair also contends that a stay will nated pretrial dis ing Fujifilm on a trate contemplated in y pending actions by the 1m s case and conserve Fujifilm is an adjudged infringer of St. Clair's patents. its s According to Fujifilm, staying resolution of the will simpli In s action is in event, St. Clair can continue to litigate infancy, and in I of having to track. Thus, St. Clair contends that denying rent stay will promote judicial economy and efficiency in these actions. Alternat ly, St. Clair to a stay because it by r defendant in a that Fujifilm wa s right not join in a stay motion filed action, did not seek 2 reconsideration of Judge Farnan's ruling denying a stay in that related action, and did not raise the issue of a stay during the Court's recent Rule 16 Conference. III. DISCUSSION As a thre not waive d matter, the Court concludes that Fuji s right to request a stay in s action. addition to a lack of any case law supporting St. 1m did In air's wa argument, the Court notes that Fujifilm initially reque r a stay in this action by letter to Judge Farnan prior to the October 15, 2008 Judge. r referr (0.1. 11 Ex. A) st for a stay in this matter to s Magistrate Judge Farnan did not s case. e on pending The Court cannot conclude that Fujifilm waived its right to seek a stay by fail to join or seek reconsideration of a motion in a related case In which it is not a party. of Fuji Accordingly, the Court will ed to merits 1m's Motion. power of the Court to stay proceedings is incidental to s inherent power to control the disposition of the cases on its docket. See Landis v. North American Co., 299 U.S. 248, 254 (1936). In determining whether to consider such ors as: a motion to stay, courts (1) the length of the requested stay; (2) the "hardship or inequity" that the movant would face in going forward the 1 ion; (3) the inj that a would inflict upon the non-movant: and (4) whether a will 3 s ify issues promote j sion to st Court. cial economy. Id. at 254 55. a proceeding lies within the discret In exe sing this competing interests and maint scretion, of Court "must weigh an even balance." Generally, the party seeking a stay "must rna of hardship or lity that out a clear case y in being required to is even a fair poss Id. at 255. forward, if there stay for which he prays 11 work damage to some one else." ifilm contends that it not make out a special showing of hardship as required by Landis because this case impl a paral 1 proceeding; COUI'ts general balance weighs in find that the of a stay when parallel suits presenting the same or similar issues are involved. cited by Fujifilm t However, the cases ly involve simultaneous federal and state proceedings, the first-filed , or proceedings before the International Trade Commission which a mandates stay of st ct court proceedings). Intermedics Infusaid, Inc. v. Regents of the Univ. F.2d 129 . Cir. 1986) (staying suit); Sandisk Corp. v. Supp. 2d 1060, 1066 (W.O. Wis. 2008) with firm Piedmont son Elecs. e.g., Minn., 804 d moot the ., 538 F. (involving ITC investigation date for completion of commission's rt Co. v. See~ ral patent case in favor of state action where judgment in state action patents ral statute Tab Corp., 236 F. Supp. stigation) ; 975 (S.D.N.Y. 4 1964) federal action in (s action) . rst-filed state rence to se circumstances are not sent here. Therefore, the Court is not convinced that the requirements of Landis must be relaxed in this case. Weighing circumstances in this case in light of the competing interests of the parties, the Court concludes stay of s action is not warranted. Both part s direct Court to Judge Farnan's recent decision denying a s Clair v. Research In Motion Ltd., et al., C 371-JJF-LPS, an action related to s case for matters. will be litigat suffers two patent of the igating fringement actions the prej 1 through expi patent. balance Fujifilm is an adjudged to St. Cl r of delaying this infringement from time of the present, is not insubstantial. passage of time, St. C obstacles and the Federal Circuit in is action clearly tips ties in favor of a stay. action, which seeks damages last tr ater hardship than However, the Court is not persuaded that while 1 infringer, 1 related case because prospect of litigating an appeal be I 1 Action No. 08 is case and consolidated with the Research In Motion Defendants i in St. purposes of discovery and other pret Fujifilm asserts that simultaneously. a r is likely to face the dentiary prospect of litigating an expired or nearly The outcome of any appeal of Fujifilm I the 5 Federal rcuit is speculative and the t adjudicat frame for of any such appeal is also uncertain. infringement and damages are likely to remain si disput issues between the parties rega of any Fuji 1m I appeal. will disrupt coordi cases, resulting and/or in In Further, ificant and disposition ess of ion, a stay of this action discovery planned r the pending the likelihood of duplicative discovery al efforts by the related actions, " ies and Court. Court is persuaded continuation of these actions at this t In sum, as the is neces for the effective administration of this case and its related counterparts." See St. Clair Intellectual Property Consultants r Inc. v. Samsung Electronics Co. Ltd' Oct. 16, 2008) IV. ing pIa r 2008 WL 4610250, at *1 (D. iff's motion to Ii s ) . CONCLUSION For reasons discussed, the Court will deny i 1m's Motion To An appropr Order will be ente 6 IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE ST. CLAIR INTELLECTUAL PROPERTY CONSULTANTS, INC., Plaintiff, v. Civil Act No. 08-373-JJF-LPS FUJIFILM HOLDINGS CORPORATION,: et al., Defendants. o At Wilmington, this set forth in t R D E R ~~~ay of January 2009, for the reasons Memorandum Opinion issued this IT IS HEREBY ORDERED that the Mot by Fuji Photo Fi 1m Holdings Corporation, Co., Ltd., U.S.A., Inc., and ; To Stay (0.1. 24) filed ifilm Corporation, Fuji i Photo Film U.S.A., Inc., Fuji 1m ifilm America, Inc. is DENIED. UNITED STATES MAGISTRATE JUDGE
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