Free Motion to Lift Stay - District Court of Colorado - Colorado

Case 1:03-cv-02579-RPM

Document 65

Filed 02/15/2006

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I N T HE U NITED S TATES D ISTRICT C OURT F OR T HE D ISTRICT O F C OLORADO Civil Action No. 03-CV-02579-RPM VARCO, L.P., Plaintiff, vs. PASON SYSTEMS USA CORP., Defendant. JURY TRIAL DEMANDED

PLAINTIFF'S UNOPPOSED MOTION TO LIFT STAY AND REQUEST FOR STATUS CONFERENCE

Plaintiff Varco, L.P. ("Varco"), by its counsel, files this motion to lift the various stay orders entered by the Court and respectfully requests that a status conference be scheduled. In support hereof, Varco states as follows: 1. On January 24, 2004, prior to answering this lawsuit, Defendant Pason

Systems USA Corp, ("Pason"), filed an Ex Parte Reexamination request in the U.S. Patent and Trademark Office ("PTO"), requesting reexamination of claims 1 and 11 of U.S. Patent No. 5,474,142 (the "'142 Patent"). Pason challenged the validity of these claims in view of U.S. Patent No. 3,223,183 to Varney ("Varney"). The PTO granted the reexamination request and Pason subsequently moved to stay the litigation pending the outcome of the reexamination proceeding. [Dkt # 18].

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2.

On June 10, 2004, this Court determined that Pason's motion to stay was

moot because Varco agreed to assert only Claim 14 for the purposes of the requested preliminary injunctive relief. [Dkt # 31]. 3. However, this action was stayed by this Court's Order Granting Motion for

Stay, dated December 20, 2004 [Dkt. #62], wherein the Court granted the parties' Joint Motion for Stay pending the appeal of the Court's order of November 14, 2004 [Dkt. #55], denying Varco's Motion for Preliminary Injunction. 4. The PTO has completed its reexamination of the '142 Patent, concluding

that the patent, including each of claims 1, 11 and 14, is not invalid in view of Varney. The PTO issued its Notice of Intent to Issue Ex Parte Reexamination Certificate on November 23, 2005, confirming all of the claims of the '142 Patent as originally issued. A copy of the PTO's notice is attached as Exhibit A. By that notice, the PTO closed the prosecution on the merits in the reexamination proceeding and found that the issued claims of the '142 Patent were patentable over the prior art of record, including Varney. Thus, the PTO concluded that the Varney patent did not raise a substantial question of patentability, i.e., the '142 Patent is not invalid in view of Varney. 5. Additionally, the appeal of the denial of Varco's motion for a preliminary

injunction was concluded on February 1, 2006, via issuance of an order of the Court of Appeals for the Federal Circuit attached hereto as Exhibit B. The Federal Circuit's order vacated the denial of Varco's motion, reversing this Court's interpretation of the terms "relaying" and "selecting" (as set forth in Dkt # 55), and remanding the case back to this Court for further proceedings.

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6.

This Court's Order Granting Motion for Stay determined that this case

"may be restored to the active docket upon motion of either party." [Dkt. #62]. Therefore, since the Reexamination proceeding has concluded and the Memorandum and Order denying Varco's motion for preliminary injunction [Dkt # 55] has been reversed, vacated and remanded, Varco respectfully requests that this matter be restored to the Court's active docket. Varco further requests that the Court schedule a status conference as soon as the Court's docket will permit. 7. Pursuant to D.C.COLO.L.CivR. 7.1(A), the undersigned counsel certifies

that she has conferred with Defendant's counsel, Barbara Weil Laff, who has confirmed that Defendant does not oppose this Motion.

Dated: February 15, 2006

Respectfully submitted,

s/Jane Michaels Jane Michaels Joseph T. Jaros H OLLAND & H ART LLP 555 Seventeenth Street, Suite 3200 Post Office Box 8749 Denver, Colorado 80201-8749 (303) 295-8000 Guy E. Matthews Robert M. Bowick M ATTHEWS , L AWSON , B OWICK & A L -A ZEM , PLLC 2000 Bering Drive, Suite 700 Houston, Texas 77057 (713) 355-4200 ATTORNEYS FOR PLAINTIFF VARCO, L.P.

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C ERTIFICATE O F S ERVICE I certify that on February 15, 2006, I served a copy of the foregoing document to the following by: U.S. Mail, postage prepaid Hand Delivery Fax E-Mail Transmission Barbara Weil Laff Kelley A. Bergelt IRELAND, STAPLETON, PRYOR AND PASCOE, P.C. 1675 Broadway, Street 2600 Denver, Colorado 80202 [email protected]

s/Jane Michaels _________________________

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