Free Memorandum and Order - District Court of Delaware - Delaware

Case 1:07-cv—OO226-JJF Document 114 Filed 03/31/2008 Page 1 of 4
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
VOITH PAPER GMBH & CO.KG,, i
Plaintiff, ;
v. ; Civil Action No. 07-226-JJF
JOHNSONFOILS, INC., ;
Defendant. E
MEMORANDUM ORDER
Pending before the Court is JohnsonFoils, Inc.’s Motion To
Stay the Proceedings Pending Reexamination Of The Patents in Suit
or in the Alternative for Leave to File a Motion for Summary
Judgment Prior to August 20, 2008 that U.S. Patents 5,718,805 and
5,972,168 Are Invalid (D.I. 27). For the reasons discussed, the
Motion will be denied.
I. BACKGROUND
On April 27, 2007, Voith Paper GmbH & Co. (“Voith”) filed
this action, alleging infringement of U.S. Patents 5,718,805
(“the ‘805 patent") and 5,972,168 (“the ‘168 patent")
(collectively, the “patents in suit") by JohnsonFoils, Inc.
(“JohnsonFoils”). The patents in suit will expire on September 8,
2010. On August 3, 2007, the Court entered a Scheduling Order in
this action, setting a trial date of November 8, 2008. (D.I. 17)
On August 24, 2007, JohnsonFoils filed Requests for
Reexamination of the patents in suit with the United States

Case 1 :07-cv—OO226-JJF Document 114 Filed O3/31/2008 Page 2 of 4
Patent and Trademark Office (“USPTO”), alleging that newly
discovered prior art raises substantial new questions regarding
the patentability of the patents in suit.
II. PARTIES' CONTENTIONS
JohnsonFoils contends that a stay would simplify the issues
before the Court since the Court will be asked to consider
arguments raised before the USPTO in the reexamination
proceedings, and, if the USPTO finds any claim invalid or if
Voith amends any claims during reexamination, any Markman claim
construction issued by the Court would be rendered moot, and an
additional Markman hearing required. JohnsonFoils also contends
that a stay will allow for a more efficient and less costly
trial. JohnsonFoils contends that a stay will not prejudice
Voith since the case is in the very early stages of litigation,
Voith's patents in suit only have about three years of
enforceable terms, and Voith will not suffer any possible loss of
damages. In the alternative, JohnsonFoils contends that the Court
should grant it leave to file a motion for summary judgment,
since “every element in all claims in the Patents—in—Suit is
disclosed in the prior art.” (D.I. 28 at 10.)
In response, Voith contends that JohnsonFoils’s request for
a stay should be denied because it disregards this Court's ruling
that it would not stay this case nor change the trial date
because of reexamination proceedings. Voith also contends that
JohnsonFoils has failed to demonstrate that being required to go

Case 1 :07-cv—OO226-JJF Document 114 Filed O3/31/2008 Page 3 of 4
forward with this litigation constitutes hardship or inequity.
Voith contends that it will unduly prejudiced by a stay because a
stay would likely result in a loss of patent exclusivity for the
remainder of the terms of the patents in suit, and that a stay is
unlikely to simplify any issues pending in this case. Voith
further contends that JohnsonFoils’s request for leave to file
summary judgment should be denied because it is premature, and
requires the Court to make a legal determination based on
underlying factual determinations without the benefit of a
factual record.
III. DISCUSSION
The decision to grant or deny a stay is within the court’s
broad range of discretionary powers. The Court concludes that a
stay will not substantially assist resolution of the issues, and
will result in substantial prejudice to Voith for the reasons it
cites. Further, the Court concludes that JohnsonFoils has failed
to make a showing of a “clear case of hardship or inequity.” Qgld
v. Johns-Manville Sales Corp. 723 F.2d 1068, 1075-1076 (3d Cir.
1983) (“1t is well settled that before a stay may be issued, the
petitioner must demonstrate ‘a clear case of hardship or
inequity,’ if there is ‘even a fair possibility’ that the stay
would work damage on another party")(quoting Landis v. North
American Co., 299 U.S. 248, 255 (1936)). The Court also
concludes, as Voith contends, that it is unlikely the pending
reexamination proceedings will do much to simplify the issues

Case 1 :07-cv—0O226-JJF Document 114 Filed 03/31/2008 Page 4 of 4
that need to be tried in this case.
The Court further concludes that consideration of
Defendant’s motion for summary judgment is premature. Courts are
“obliged to give a party opposing summary judgment an adequate
opportunity to obtain discovery.” Dowling v. Philadelphia, 855
F.2d 136, 139 (3d Cir. 1988) (citing Celotex Corp. v. Catrett,
477 U.S. 317, 322 (1986)). Accordingly, the Court will not grant
JohnsonFoils leave to file an early summary judgment motion.
Thus, the Court will deny JohnsonFoils’s Motion To Stay the
Proceedings Pending Reexamination Of The Patents in Suit or in
the Alternative for Leave to File a Motion for Summary Judgment
Prior to August 20, 2008 that U.S. Patents 5,718,805 and
5,972,168 Are Invalid (D.I. 27).
QBQEZ
NOW THEREFORE, IT IS HEREBY ORDERED that JohnsonFoils’s
Motion To Stay the Proceedings Pending Reexamination Of The
Patents in Suit or in the Alternative for Leave to File a Motion
for Summary Judgment Prior to August 20, 2008 that U.S. Patents
5,718,805 and 5,972,168 Are Invalid (D.I. 27) is DENIED.
March 31, 2008 $1/Eg], $5 .
UNITED STATES DISTRICT JUDGE