Free Status Report - District Court of Delaware - Delaware

Case 1 :04-cv-01442-GIVIS Document 16 Filed 02/08/2006 Page 1 of 3
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
ROADMASTER (USA) CORP., :
Plaintiff, : CIVIL ACTION NO. 04-1442 (GMS)
v. :
CARSTECH INC., d/b/a CARSTECH INC.,
and SINOCHEM NINGBO, LTD., in its own :
right, and d/b/a CARSTECH INC. and/or :
d/b/a CARSTECH USA, INC., :
Defendants. :
PLAINTIFF ROADMASTER (USA) CORP.’S STATUS REPORT IN RESPONSE TO
CASE MANAGER’S REQ QUEST DATED JANUARY 9, 2006 gD.I. N0. 15)
This patent, trademark and copyright infringement case was commenced by plaintiff
Roadmaster (USA) Corp. ("Roadmaster") against defendants CarsTech USA ("CarsTech") and
Sinochem Ningbo, LTD ("Sinochem") on November 12, 2004. Sinochem is a Chinese company
and CarsTech was a subsidiary, dealer and/or outlet in the U.S. for infringing products
manufactured by Sinochem. After CarsTech was served with process, Roadmaster entered into
negotiations with CarsTech that culminated in a stipulated consent order and permanent
injunction, which was approved by the Court on February 22, 2005 (D.I. No. 11). This, along
with a stipulation of dismissal, resolved the case against CarsTech. (D.I. No. 12).
On March 14, 2005, Roadmaster moved for an order clarifying that the 120-day time
limit for service of process set forth in Federal Rule of Civil Procedure 4(m) did not apply to
service upon Sinochem (D.I. No. 14) because it was located outside the United States. The Court
agreed and entered the requested order on April 18, 2005.
As discussed in the March 14, 2005 Motion, counsel for Roadmaster solicited bids from
several different process servers and translation services. Roadmaster is a closely-held, family
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Case 1 :04-cv—01442-GIVIS Document 16 Filed 02/08/2006 Page 2 of 3
business and, after being apprised of the expense involved in translating all the documents
associated with the complaint and completing service in China under the Hague Convention,
Roadmaster asked counsel to explore other altematives. One alternative was to consider
bringing Roadmaster’s complaint before the United States International Trade Commission
("ITC"). One obvious advantage to this alternative course was that service under the ITC rules is
completed by the ITC, for the most part, without the need for costly translation of the complaint
and the multiple attachments to the complaint.
Roadmaster authorized counsel to prepare a complaint for filing in the ITC, after which
no further action was taken to serve the complaint in this civil action on Sinochem in China.
Preparation of the ITC action required Roadmaster to obtain certified copies of relevant
documents from the United States Patent Office, the Trademark Office, and the Copyright
Office. Unfortunately, we experienced many months of delay in obtaining these certified copies,
notably those requested from the Copyright Office.
The final draft of an ITC complaint has now been prepared and sent to the ITC in
Washington, D.C. for filing. When the ITC accepts the complaint, which we have every reason
to believe it will, Roadmaster expects to move for a stay of this action under 28 U.S.C. § 1659,
which permits any party to both an ITC action and a related civil action in a district court to
request a stay of the district court civil action pending the outcome of the ITC action. Based on
our informal communications with the ITC, we anticipate that Roadmaster will apply for such a
stay, if Sinochem does not earlier apply, within ninety (90) days of the date of this Report.
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Case 1 :04-cv—01442-GIVIS Document 16 Filed 02/08/2006 Page 3 of 3
Respectfully submitted,
WOLF, BLOCK, SCHORR and SOLIS-COHEN LLP
/_,/A nj .;/7
/ . / l ;.’*’/I 1 ,
By: { i f {0 72/
Barry M. Klayman,’Esqu»rre (#3676)
Wilmington Trust Center
1100 N. Market Street, Suite 1001
Wilmington, DE 19801
Tel: (302) 777-0313
Fax: (302) 778-7813
Attorneys for Plaintiff
Of Counsel:
James Greenberg, Esq.
Wolf, Block, Schorr and Solis-Cohen LLP
1940 Route 70 East, Suite 200
Cherry Hill, NJ 07068
(856) 424-8200
Robert F. Zielinski, Esquire
Charles M. Hart, Esquire
Wolf, Block, Schorr and Solis-Cohen LLP
1650 Arch Street, 22nd Floor
Philadelphia, PA 19103
(215) 977-2000
Dated: February 8, 2006
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