Free Motion to Stay - District Court of California - California

Case 3:08-cv-01256-BTM-CAB

Document 12

Filed 08/13/2008

Page 1 of 4

1 2 2 3 4 3 5 6 4 7 8 5 9 10 11 6 12 13 7 14 15 8 16 17 9 18 19 10 20 21 11 22 23 12 24 25 13 26 27 14 28 15 16

J. Christopher Jaczko (149317) Allison H. Goddard (211098) JACZKO GODDARD LLP 4401 Eastgate Mall San Diego, California 92121 Phone: (858) 550-6150 Fax: (858) 225-3500 Dean D. Niro (Pro Hac Vice) Robert A. Conley (Pro Hac Vice) NIRO, SCAVONE, HALLER & NIRO 181 West Madison, Suite 4600 Chicago, Illinois 60602 Phone: (312) 236-0733 Fax: (312) 236-3137 Attorneys for CONAIR CORPORATION IN THE UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF CALIFORNIA JENS ERIK SORENSEN, as Trustee of SORENSEN RESEARCH AND DEVELOPMENT TRUST, Plaintiff, v. CONAIR CORPORATION, a Delaware Corporation; and DOES 1-100, Defendants. CONAIR CORPORATION, Date: September 26, 2008 Time: 11:00 am Courtroom 15, Fifth Floor Hon. Barry Ted Moskowitz NO ORAL ARGUMENT UNLESS REQUESTED BY THE COURT Case No. 08cv1256 BTM (CAB) NOTICE OF MOTION AND CONAIR CORPORATION'S MOTION TO STAY THE LITIGATION PENDING THE OUTCOME OF REEXAMINATION PROCEEDINGS

17 Counter-Plaintiff, 18 19 20 21 22 23 24 v. JENS ERIK SORENSEN, as Trustee of SORENSEN RESEARH AND DEVELOPMENT TRUST, Counter-Defendant.

Case No. 08cv1256 BTM (CAB)

Case 3:08-cv-01256-BTM-CAB

Document 12

Filed 08/13/2008

Page 2 of 4

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24

NOTICE IS HEREBY GIVEN that on September 26, 2008, at 11:00 a.m., or as soon thereafter as the matter may be heard by the above-entitled Court, located at 940 Front Street, San Diego, CA 92101-8900, Defendant Conair Corporation ("Conair") will and hereby does respectfully move for a stay of the above-captioned proceeding pending the outcome of the United States Patent & Trademark Office's ("PTO") reexamination of the patent-in-suit, U.S. Patent No. 4,935,184 ("the '184 patent"). Plaintiff, Jens Erik Sorensen, as Trustee of Sorensen Research and Development Trust ("Sorensen"), filed his Complaint against Conair on July 11, 2008. Counting the instant case against Conair, there are presently 25 separate actions pending before this Court in which Sorensen has alleged infringement of the '184 patent by various defendants. As this Court is well aware, nearly every one of these 25 cases has been stayed pending the outcome of the PTO's ongoing reexamination of the '184 patent. The facts of the instant case between Sorensen and Conair provide no basis for a departure from the analysis and reasoning which this Court has now repeatedly applied in the course of ordering that the host of other pending Sorensen cases involving the '184 patent be stayed. A stay of the instant case is likewise appropriate. A stay is particularly warranted given the current status of this case. Sorensen filed his Complaint just over one month ago, and filed an Amended Complaint approximately one week ago. There has been no ENE conference or case management conference. The parties have not yet exchanged Rule 26(a)(1) initial disclosures. There has been no discovery, no dispositive motions have been submitted, and no trial date has been set. A stay will not only conserve the resources of both the Court and the parties, but will also provide the benefit of simplifying (if not eliminating) the issues for trial. Furthermore, all of these benefits will come at no prejudice to Sorensen.

-1-

Case No. 08cv1256 BTM (CAB)

Case 3:08-cv-01256-BTM-CAB

Document 12

Filed 08/13/2008

Page 3 of 4

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24

For the reasons set forth in greater detail in the supporting memorandum and related pleadings submitted herewith, Conair respectfully requests that the Court order this case stayed pending completion of the PTO's ongoing reexamination of the '184 patent.

Dated: August 13, 2008

JACZKO GODDARD LLP NIRO SCAVONE HALLER & NIRO

By: /s/ Allison H. Goddard Allison H. Goddard Attorneys for Defendant and Counter-Plaintiff CONAIR CORPORATION

-2-

Case No. 08cv1256 BTM (CAB)

Case 3:08-cv-01256-BTM-CAB

Document 12

Filed 08/13/2008

Page 4 of 4

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16

PROOF OF SERVICE I hereby certify that on August 13, 2008, I caused the foregoing NOTICE OF MOTION AND CONAIR CORPORATION'S MOTION TO STAY THE LITIGATION PENDING THE OUTCOME OF REEXAMINATION PROCEEDINGS to be

electronically filed with the Clerk of the Court using the CM/ECF system which will send notification of such filing to: J. Michael Kaler (158296) KALER LAW OFFICES 9930 Mesa Rim Road, Suite 200 San Diego, California 92121 Phone: (858) 362-3151 Fax: (858) 824-9073 [email protected] Melody A. Kramer (169984) KRAMER LAW OFFICE 9930 Mesa Rim Road, Suite 1600 San Diego, California 92121 Phone: (858) 362-3150 Fax: (858) 824-9073 [email protected] Attorneys for Plaintiff

I certify that all parties in this case are represented by counsel who are CM/ECF 17 participants. 18 19 20 21 22 23 24 /s/ Allison H. Goddard Attorney for Conair Corporation

-3-

Case No. 08cv1256 BTM (CAB)

Case 3:08-cv-01256-BTM-CAB

Document 12-2

Filed 08/13/2008

Page 1 of 11

1 2 2 3 4 3 5 6 4 7 8 5 9 10 11 6 12 13 7 14 15 8 16 17 9 18 19 10 20 21 11 22 23 12 24 25 13 26 27 14 28 15 16

J. Christopher Jaczko (149317) Allison H. Goddard (211098) JACZKO GODDARD LLP 4401 Eastgate Mall San Diego, California 92121 Phone: (858) 550-6150 Fax: (858) 225-3500 Dean D. Niro (Pro Hac Vice) Robert A. Conley (Pro Hac Vice) NIRO, SCAVONE, HALLER & NIRO 181 West Madison, Suite 4600 Chicago, Illinois 60602 Phone: (312) 236-0733 Fax: (312) 236-3137 Attorneys for CONAIR CORPORATION IN THE UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF CALIFORNIA JENS ERIK SORENSEN, as Trustee of SORENSEN RESEARCH AND DEVELOPMENT TRUST, Plaintiff, v. CONAIR CORPORATION, a Delaware Corporation; and DOES 1-100, Defendants. CONAIR CORPORATION, Case No. 08cv1256 BTM (CAB) MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF CONAIR CORPORATION'S MOTION TO STAY THE LITIGATION PENDING THE OUTCOME OF REEXAMINATION PROCEEDINGS Date: September 26, 2008 Time: 11:00 am Courtroom 15, Fifth Floor Hon. Barry Ted Moskowitz NO ORAL ARGUMENT UNLESS REQUESTED BY THE COURT

17 Counter-Plaintiff, 18 19 20 21 22 23 24 v. JENS ERIK SORENSEN, as Trustee of SORENSEN RESEARH AND DEVELOPMENT TRUST, Counter-Defendant.

Case No. 08cv1256 BTM (CAB)

Case 3:08-cv-01256-BTM-CAB

Document 12-2

Filed 08/13/2008

Page 2 of 11

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24

Defendant Conair Corporation ("Conair") respectfully moves for a stay of the abovecaptioned proceeding pending the outcome of the United States Patent & Trademark Office's ("PTO") reexamination of the patent-in-suit, U.S. Patent No. 4,935,184 ("the '184 patent"). I. BACKGROUND Plaintiff, Jens Erik Sorensen, as Trustee of Sorensen Research and Development Trust ("Sorensen"), filed a Complaint against Conair on July 11, 2008. Counting the instant case against Conair, there are presently 25 separate actions pending before this Court in which Sorensen has alleged infringement of the '184 patent by various defendants.1 As this Court is well aware, nearly every one of these 25 cases has been stayed pending the outcome of the PTO's ongoing reexamination of the '184 patent. 2 The facts of the instant case between Sorensen and Conair provide no basis for a departure from the analysis and reasoning which this Court has now repeatedly applied in the course of ordering that the host of other pending Sorensen cases involving the '184 patent be stayed. A stay of the instant case is likewise appropriate, and Conair's motion should accordingly be granted. II. STATUS OF THE REEXAMINATION PROCEEDINGS Sorensen's '184 patent is presently the subject of two reexamination proceedings pending before the PTO. In the first proceeding (Reexamination Control No. 90/008,775), the PTO ordered reexamination of the '184 patent on October 11, 2007. (Exhibit A, Transaction History Pursuant to the Court's "Low Number Rule," all 25 of these cases have been assigned to Judge Moskowitz and Magistrate Judge Bencivengo. The only cases which have not yet been stayed are Case Nos. 08cv25, 08cv232, 08cv559 and 08cv1080. In Case No. 08cv25, the Clerk has entered a notice of default against the named defendant for failure to plead or otherwise defend. In Case Nos. 08cv232 and 08cv559, the Court has entered an order instructing the parties not to file any additional briefing on pending motions until the Court resolves the issue of whether these cases should be stayed. In Case No. 08cv1080, the named defendant has filed a motion to stay the litigation, but briefing on the issue has not yet been completed and no decision has been entered by the Court. All of the remaining cases pending before this Court in which Sorensen has alleged infringement of the '184 patent have been stayed. -1Case No. 08cv1256 BTM (CAB)
2 1

Case 3:08-cv-01256-BTM-CAB

Document 12-2

Filed 08/13/2008

Page 3 of 11

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24

of Reexamination Control No. 90/008,775).3 In the second proceeding (Reexamination Control No. 90/008,976), the PTO ordered reexamination of the '184 patent on February 21, 2008. (Exhibit B, Transaction History of Reexamination Control No. 90/008,976). Although the PTO has not yet issued a substantive office action in either proceeding, the issuance of such an office action in one or both of the proceedings is likely imminent. Indeed, the PTO is required to conduct reexamination proceedings with "special dispatch," and priority is given to proceedings in which the subject patent (here, the '184 patent) is concurrently involved in litigation. Manual of Patent Examining Procedure § 2261 ("Any cases involved in litigation, whether they are reexamination proceedings or reissue applications, will have priority over all other cases.") (Exhibit 1).4 Having recently conducted an extensive "Reexam Litigation Search", the PTO is well aware that the '184 patent is presently involved in more than twenty lawsuits pending before this Court. (Exhibit B, Transaction History of Reexamination Control No. 90/008,976). III. LEGAL STANDARD FOR A STAY PENDING PTO REEXAMINATION Courts have inherent power to stay an action pending conclusion of PTO reexamination proceedings. Ethicon v. Quigg, 849 F.2d 1422, 1426-27 (Fed. Cir. 1988); Sorensen v. Black & Decker Corp., 2007 U.S. Dist. LEXIS 66712, *10 (S.D. Cal. Sept. 10, 2007) (Moskowitz, J., presiding) (Exhibit 2); SKF Condition Monitoring, Inc. v. SAT Corp., 2008 U.S. Dist. LEXIS 24310, *17 (S.D. Cal. Feb. 26, 2008) (Moskowitz, J., presiding) (Exhibit 3). Determining whether to grant a stay pending the outcome of the PTO's reexamination is a matter soundly within the discretion of the district court. Sorensen, 2007 U.S. Dist. LEXIS 66712 at *10; SKF Condition, 2008 U.S. Dist. LEXIS 24310 at*17; see also Photoflex Prods., Inc. v. Circa 3 LLC,
3

Exhibits A and B are appended to the Declaration of Robert A. Conley, submitted herewith.
4

Exhibits 1-9 are appended to the Notice of Lodging of Authorities, submitted

herewith. -2Case No. 08cv1256 BTM (CAB)

Case 3:08-cv-01256-BTM-CAB

Document 12-2

Filed 08/13/2008

Page 4 of 11

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17

2006 U.S. Dist. LEXIS 37743, *2-3 (N.D. Cal. May 24, 2006) (Exhibit 4). There is a "liberal policy" in favor of granting motions to stay proceedings pending the outcome of PTO reexamination proceedings. Sorensen, 2007 U.S. Dist. LEXIS 66712 at *10; SKF Condition, 2008 U.S. Dist. LEXIS 24310 at *18; Photoflex Prods., 2006 U.S. Dist. LEXIS 37743 at *3; Nanometrics, Inc. v. Nova Measuring Instruments, Ltd., 2007 U.S. Dist. LEXIS 18785, *4 (N.D. Cal. Feb. 26, 2007) (Exhibit 5). When ruling on such a stay, courts have considered the following factors: (1) the stage of litigation, i.e., whether discovery is almost complete and whether a trial date has been set; (2) whether a stay would cause undue prejudice or present a clear disadvantage to the non-moving party, and (3) whether a stay will simplify the issues in question and streamline the trial. Sorensen, 2007 U.S. Dist. LEXIS 66712 at *10-11; SKF Condition, 2008 U.S. Dist. LEXIS 24310 at *18; Photoflex Prods. LLC, 2006 U.S. Dist. LEXIS 37743 at *3; Nanometrics, 2007 U.S. Dist. LEXIS 18785 at *4. In this case, each and every relevant consideration weighs heavily in favor of staying the present litigation pending the outcome of the PTO's reexamination of the '184 patent. IV. A STAY OF THE LITIGATION PENDING THE OUTCOME OF THE PTO'S REEXAMINATION OF THE '184 PATENT IS WARRANTED A stay in this case is particularly appropriate for at least the following reasons: (1) this

18 case is at its initial stage, and there has been no discovery; (2) Sorensen will not be prejudiced 19 by a stay; and (3) a stay will simplify the issues for trial and reduce the burden of litigation on 20 the parties as well as the Court. 21 A. 22 23 24 The Early Stage Of This Litigation Favors A Stay This litigation is still in its nascent stages. Sorensen filed his Complaint just over one month ago, and filed an Amended Complaint approximately one week ago. There has been no ENE conference or case management conference. The parties have not yet exchanged Rule -3Case No. 08cv1256 BTM (CAB)

Case 3:08-cv-01256-BTM-CAB

Document 12-2

Filed 08/13/2008

Page 5 of 11

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24

26(a)(1) initial disclosures. There has been no discovery, no dispositive motions have been submitted, and no trial date has been set. Numerous courts have found that stays are

particularly appropriate under such circumstances. See, e.g., Tse v. Apple, Inc., 2007 U.S. Dist. LEXIS 76521, *4-8 (N.D. Cal. Oct. 4, 2007) ("A stay is particularly appropriate for cases in the initial stages of litigation or in which there has been little discovery.") (Exhibit 6); SKF Condition, 2008 U.S. Dist. LEXIS 24310 at *18; Sorensen v. Digital Networks North America Inc., 2008 U.S. Dist. LEXIS 6454, *4-5 (N.D. Cal. Jan. 16, 2008) (Exhibit 7); KLA-Tencor Corp. v. Nanometrics, Inc., 2006 U.S. Dist. LEXIS 15754, *5-6 (N.D. Cal. Mar. 16, 2006) (Exhibit 8); ASCII Corp. v. STD Entertainment USA, Inc., 844 F.Supp. 1378, 1381 (N.D. Cal. 1994). This factor clearly favors a stay. B. Sorensen Will Not Be Prejudiced By A Stay

A stay of the instant litigation will not prejudice Sorensen in any way. A stay will not prejudice Sorensen's right to collect damages (assuming there are any), as Sorensen will retain an adequate remedy at law should the '184 patent survive the reexamination proceedings. The '184 patent expired in February of 2008. Accordingly, Sorensen is not entitled to an injunction against Conair in the instant case. Rather, Sorensen's claim against Conair is solely for past monetary damages ­ damages which will not change regardless of whether this case is stayed. As this Court has expressly recognized, should the '184 patent survive the reexamination proceedings and Sorensen is able to ultimately prevail on his claim of patent infringement, an award of past monetary damages, together with prejudgment interest, is "fully capable of compensating [Sorensen]." Sorensen, 2007 U.S. Dist. LEXIS 66712 at *13-14; see also SKF Condition, 2008 U.S. Dist. LEXIS 24310 at *19-20. Sorensen will likely suggest that he would be prejudiced by a stay due to the potential length of the ongoing reexamination proceedings before the PTO. This argument is without

-4-

Case No. 08cv1256 BTM (CAB)

Case 3:08-cv-01256-BTM-CAB

Document 12-2

Filed 08/13/2008

Page 6 of 11

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24

merit. As this Court has recognized, "the general prejudice of having to wait for resolution [of a reexamination proceeding] is not a persuasive reason to deny the motion for stay." Sorensen, 2007 U.S. Dist. LEXIS 66712 at *14. In this regard, courts have repeatedly held that the delay inherent to the reexamination process does not constitute, by itself, undue prejudice. See e.g., Sorensen, 2008 U.S. Dist. LEXIS 6454 at *5; SKF Condition, 2008 U.S. Dist. LEXIS 24310 at *20; Tse, 2007 U.S. Dist. LEXIS 76521 at *11-12; Photoflex Prods., 2006 U.S. Dist. LEXIS 37743 at *7; Nanometrics, 2007 U.S. Dist. LEXIS 18785 at *9; KLA-Tencor, 2006 U.S. Dist. LEXIS 15754 at *7. Some delay in the instant litigation "is more than off-set by increased certainty of whether this single patent [the '184 patent] will survive reexamination and whether there will be any need for litigation." Nanometrics, 2007 U.S. Dist. LEXIS 18785 at *10. There accordingly is no prejudice to Sorensen should a stay be entered in this case. While Sorensen will suffer no prejudice from entry of a stay in this case, Conair could potentially be prejudiced should a stay not be entered. As this Court has recognized, the Federal Circuit has confirmed that the PTO need not be bound by the determinations of district courts while conducting reexamination proceedings. Sorensen, 2007 U.S. Dist. LEXIS 66712 at *14-15, citing In re Trans Texas Holdings Corp., 498 F.3d 1290, 1296-98 (Fed. Cir. 2007). Conair could accordingly be faced with the following predicament should the Court not stay this case: Not only could the Court and the PTO reach conflicting determinations, but one possible scenario could result in irreparable harm to [Defendant]: if this Court finds that the [patent] is not invalid and that [Defendant] has infringed it, and orders [Defendant] to pay damages to [Plaintiff] for such infringement, then [Defendant] would have no ability to recover those damages if at a later date the PTO determined that the [] patent is invalid.

Sorensen, 2007 U.S. Dist. LEXIS 66712 at *15, citing Bausch & Lomb, Inc. v. Alcon Lab., Inc., 914 F.Supp. 951, 952 (W.D.N.Y. 1996). The possibility of such a scenario, which this Court

-5-

Case No. 08cv1256 BTM (CAB)

Case 3:08-cv-01256-BTM-CAB

Document 12-2

Filed 08/13/2008

Page 7 of 11

1 2 3 4 5 6 7

has described as a "highly undesirable outcome," can be eliminated by entry of a stay in this case. Sorensen, 2007 U.S. Dist. LEXIS 66712 at *15. In sum, there simply is no identifiable prejudice which would impact Sorensen as a result of a stay being entered in this case. On the other hand, failure to enter a stay in this case would put Conair at risk of irreparable harm. Accordingly, this factor clearly favors a stay. C. A Stay Will Simplify The Issues For Trial, And May Even Eliminate The Need For A Trial Altogether

"A stay is particularly justified where the outcome of the reexamination would be likely 8 to assist the court in determining patent validity and, if the claims were cancelled in the 9 reexamination, would eliminate the need to try the infringement issue." See In re Cygnus 10 Telecommunications Tech., LLC Patent Litigation, 385 F.Supp.2d 1022, 1023 (N.D. Cal. 2005). 11 With respect to the issue of patent claim validity, the Federal Circuit has recognized that the 12 reexamination procedure serves to "eliminate trial of that issue (when the claim is cancelled) or 13 to facilitate trial of the issue by providing a district court with the expert view of the PTO (when 14 a claim survives the reexamination proceeding)." Gould v. Control Laser Corp., 705 F.2d 1340, 15 1342 (Fed. Cir. 1983). This Court has previously acknowledged the multiple benefits which it 16 will receive from the PTO's evaluation of Sorensen's '184 patent: 17 18 19 20 Sorensen, 2007 U.S. Dist. LEXIS 66712 at *16-17. While a stay of the instant litigation 21 between Sorensen and Conair is particularly justified for this reason alone, there is more. 22 As the Court is well aware, the '184 patent expired in February of 2008. This is an 23 especially compelling fact because, unlike most reexamination proceedings, Sorensen will not 24 be afforded the opportunity of amending the claims of the '184 patent: -6Case No. 08cv1256 BTM (CAB) The Court believes that it will benefit from the PTO's evaluation of how the previously unconsidered prior art references impact the claims of the ['184 patent]. The PTO's expert evaluation is likely to be of assistance not only as to the issues of validity, but its understanding of the claims is also likely to aid this Court in the preliminary process of claim construction.

Case 3:08-cv-01256-BTM-CAB

Document 12-2

Filed 08/13/2008

Page 8 of 11

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24

No enlargement of claim scope. No amendment may enlarge the scope of the claims of the patent or introduce new matter. No amendment may be proposed for entry in an expired patent. Moreover, no amendment, other than the cancellation of claims, will be incorporated into the patent by a certificate issued after the expiration of the patent. 37 C.F.R. §1.530(j) (emphasis added); The cancellation of the original patent claims is the only "amendatory" change permitted in an expired patent. Manual of Patent Examining Procedure § 2250 (III) (emphasis added) (Exhibit 1). Simply put, the claims of the '184 patent (as well as Sorensen's ability to assert infringement thereof) will live or die with the reexamination proceedings without change. The impact of this fact is not inconsequential: The Court finds that, especially in this case, the reexamination process has the potential to significantly narrow the issues for trial because of the impending expiration of the '184 patent. While the parties have argued at length about exactly how this additional variable affects the calculation of the likely outcome of reexamination, the Court need not resolve this dispute to reach the proper conclusion. It is enough to note that when reexamination is requested by a third party, as in this case, all claims are confirmed only 29% of the time. (See PTO Reexamination Statistics at Ex. B to Niro Decl.; Doc. #180-3). Since no amendments can be offered to an expired patent, there is obviously a significant likelihood that the validity of the claims at issue in this action will be affected by the reexamination process. Sorensen, 2007 U.S. Dist. LEXIS 66712 at *17 (emphasis added). The "significant likelihood" that the validity of the claims of the '184 patent will be impacted by the ongoing reexamination proceedings is all the more reason for the Court to stay this case. There can be no dispute that the PTO's reexamination of the '184 patent will, at a minimum, simplify the issues for trial in this case. This will hold true even if every claim of the '184 patent manages to survive the reexamination process. If, on the other hand, one or more claims of the '184 patent do not survive the reexamination process, Sorensen's ability to assert infringement of such claim(s) will terminate, and the issues before this Court will be further narrowed. Finally, if no claim of the '184 patent survives the reexamination process, the need -7Case No. 08cv1256 BTM (CAB)

Case 3:08-cv-01256-BTM-CAB

Document 12-2

Filed 08/13/2008

Page 9 of 11

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24

for a trial before this Court on Sorensen's infringement claim against Conair would be altogether eliminated. Under any one of these three scenarios, a stay of the instant case will reduce the burdens associated with litigation (such as cost and time) for not only the parties, but the Court as well. There is simply no sense in wasting the resources of the parties and the Court by litigating over issues that may ultimately be rendered moot by the outcome of the PTO's reexamination proceedings. All of the costs and time inherent to litigating this case can be greatly reduced (if not eliminated) by entry of a stay, with no prejudice to Sorensen. A stay is particularly appropriate under these circumstances. V. CONAIR HAS NO OBJECTION TO THE CONDITIONS WHICH THIS COURT HAS ATTACHED TO STAYS ENTERED IN OTHER CASES INVOLVING SORENSEN'S '184 PATENT In the course of entering stays in the twenty-some odd cases involving the '184 patent which Sorensen presently has pending before it, this Court has attached several conditions to its orders. One such condition requires that the defendant "identify and submit any relevant prior art that is not already being considered by the United States Patent Office as soon as possible to facilitate the completion of the reexamination process within a reasonable period of time." Sorensen v. Rally Mfg., Inc., Case No. 08cv305, Doc. #15 (S.D. Cal. Apr. 25, 2008) (Exhibit 9). Conair has no objection to this condition, and will identify and submit to Sorensen any relevant prior art that is presently known to Conair (exclusive of that already before the PTO) within two weeks of the Court's entry of a stay in this case. A second condition provides that "any party may apply to the Court for an exception to the stay if it has specific, valid reasons to believe that it needs to obtain discovery in order to preserve evidence that will otherwise be unavailable after the stay." Id. Conair has no objection to this condition either, so long as Sorensen does not perceive the condition to be an unfettered

-8-

Case No. 08cv1256 BTM (CAB)

Case 3:08-cv-01256-BTM-CAB

Document 12-2

Filed 08/13/2008

Page 10 of 11

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24

license authorizing Sorensen to conduct a fishing expedition with respect to Conair's business operations. In this regard, Conair acknowledges its duty to preserve evidence within its custody or control pertaining to Sorensen's claim of patent infringement. VI. CONCLUSION For all of the foregoing reasons, Conair respectfully requests that the Court order this case stayed pending the outcome of the PTO's reexamination of the '184 patent.

Dated:

August 13, 2008

JACZKO GODDARD LLP NIRO SCAVONE HALLER & NIRO

By:

/s/ Allison H. Goddard Allison H. Goddard Attorneys for Defendant and Counter-Plaintiff CONAIR CORPORATION

-9-

Case No. 08cv1256 BTM (CAB)

Case 3:08-cv-01256-BTM-CAB

Document 12-2

Filed 08/13/2008

Page 11 of 11

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16

PROOF OF SERVICE I hereby certify that on August 13, 2008, I caused the foregoing MEMORANDUM IN SUPPORT OF CONAIR CORPORATION'S MOTION TO STAY THE LITIGATION PENDING THE OUTCOME OF REEXAMINATION PROCEEDINGS to be

electronically filed with the Clerk of the Court using the CM/ECF system which will send notification of such filing to: J. Michael Kaler (158296) KALER LAW OFFICES 9930 Mesa Rim Road, Suite 200 San Diego, California 92121 Phone: (858) 362-3151 Fax: (858) 824-9073 [email protected] Melody A. Kramer (169984) KRAMER LAW OFFICE 9930 Mesa Rim Road, Suite 1600 San Diego, California 92121 Phone: (858) 362-3150 Fax: (858) 824-9073 [email protected] Attorneys for Plaintiff

I certify that all parties in this case are represented by counsel who are CM/ECF 17 participants. 18 19 20 21 22 23 24 /s/ Allison H. Goddard Attorney for Conair Corporation

- 10 -

Case No. 08cv1256 BTM (CAB)

Case 3:08-cv-01256-BTM-CAB

Document 12-3

Filed 08/13/2008

Page 1 of 7

1 2 2 3 4 3 5 6 4 7 8 5 9 10 11 6 12 13 7 14 15 8 16 17 9 18 19 10 20 21 11 22 23 12 24 25 13 26 27 14 28 15 16

J. Christopher Jaczko (149317) Allison H. Goddard (211098) JACZKO GODDARD LLP 4401 Eastgate Mall San Diego, California 92121 Phone: (858) 550-6150 Fax: (858) 225-3500 Dean D. Niro (Pro Hac Vice) Robert A. Conley (Pro Hac Vice) NIRO, SCAVONE, HALLER & NIRO 181 West Madison, Suite 4600 Chicago, Illinois 60602 Phone: (312) 236-0733 Fax: (312) 236-3137 Attorneys for CONAIR CORPORATION IN THE UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF CALIFORNIA JENS ERIK SORENSEN, as Trustee of SORENSEN RESEARCH AND DEVELOPMENT TRUST, Plaintiff, v. CONAIR CORPORATION, a Delaware Corporation; and DOES 1-100, Defendants. CONAIR CORPORATION, Case No. 08cv1256 BTM (CAB) DECLARATION OF ROBERT A. CONLEY IN SUPPORT OF CONAIR CORPORATION'S MOTION TO STAY THE LITIGATION PENDING THE OUTCOME OF REEXAMINATION PROCEEDINGS Date: September 26, 2008 Time: 11:00 am Courtroom 15, Fifth Floor Hon. Barry Ted Moskowitz NO ORAL ARGUMENT UNLESS REQUESTED BY THE COURT

17 Counter-Plaintiff, 18 19 20 21 22 23 24 v. JENS ERIK SORENSEN, as Trustee of SORENSEN RESEARH AND DEVELOPMENT TRUST, Counter-Defendant.

Case No. 08cv1256 BTM (CAB)

Case 3:08-cv-01256-BTM-CAB

Document 12-3

Filed 08/13/2008

Page 2 of 7

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24

Robert A. Conley declares and states as follows: I am an attorney at the law firm of Niro, Scavone, Haller & Niro, which represents Conair Corporation in this case. Unless otherwise stated herein, I have personal knowledge of the facts stated in this declaration and if called upon by a court of law to do so, I could and would testify competently to them. 1. Attached hereto as Exhibit A is a true and correct copy of the Transaction

History for Reexamination Control No. 90/008,775 which was downloaded from the PTO's publicly available PAIR website on August 12, 2008. 2. Attached hereto as Exhibit B is a true and correct copy of the Transaction

History for Reexamination Control No. 90/008,976 which was downloaded from the PTO's publicly available PAIR website on August 12, 2008. I declare under penalty of perjury under the laws of the State of California that the foregoing is true and correct.

Dated: August 13, 2008

/s/ Robert A. Conley Robert A. Conley

-1-

Case No. 08cv1256 BTM (CAB)

Case 3:08-cv-01256-BTM-CAB

Document 12-3

Filed 08/13/2008

Page 3 of 7

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16

PROOF OF SERVICE I hereby certify that on August 13, 2008, I caused the foregoing DECLARATION OF ROBERT A. CONLEY IN SUPPORT OF CONAIR CORPORATION'S MOTION TO STAY THE LITIGATION PENDING THE OUTCOME OF REEXAMINATION PROCEEDINGS to be electronically filed with the Clerk of the Court using the CM/ECF system which will send notification of such filing to: J. Michael Kaler (158296) KALER LAW OFFICES 9930 Mesa Rim Road, Suite 200 San Diego, California 92121 Phone: (858) 362-3151 Fax: (858) 824-9073 [email protected] Melody A. Kramer (169984) KRAMER LAW OFFICE 9930 Mesa Rim Road, Suite 1600 San Diego, California 92121 Phone: (858) 362-3150 Fax: (858) 824-9073 [email protected] Attorneys for Plaintiff

I certify that all parties in this case are represented by counsel who are CM/ECF 17 participants. 18 19 20 21 22 23 24 /s/ Allison H. Goddard Attorney for Conair Corporation

-2-

Case No. 08cv1256 BTM (CAB)

Case 3:08-cv-01256-BTM-CAB

Document 12-3

Filed 08/13/2008

Page 4 of 7

Exhibit A

Case 3:08-cv-01256-BTM-CAB

Document 12-3

Filed 08/13/2008

Page 5 of 7

EXHIBIT A - Page 1

Case 3:08-cv-01256-BTM-CAB

Document 12-3

Filed 08/13/2008

Page 6 of 7

Exhibit B

Case 3:08-cv-01256-BTM-CAB

Document 12-3

Filed 08/13/2008

Page 7 of 7

EXHIBIT B - Page 2

Case 3:08-cv-01256-BTM-CAB

Document 12-4

Filed 08/13/2008

Page 1 of 48

1 2 2 3 4 3 5 6 4 7 8 5 9 10 11 6 12 13 7 14 15 8 16 17 9 18 19 10 20 21 11 22 23 12 24 25 13 26 27 14 28 15 16

J. Christopher Jaczko (149317) Allison H. Goddard (211098) JACZKO GODDARD LLP 4401 Eastgate Mall San Diego, California 92121 Phone: (858) 550-6150 Fax: (858) 225-3500 Dean D. Niro (Pro Hac Vice) Robert A. Conley (Pro Hac Vice) NIRO, SCAVONE, HALLER & NIRO 181 West Madison, Suite 4600 Chicago, Illinois 60602 Phone: (312) 236-0733 Fax: (312) 236-3137 Attorneys for CONAIR CORPORATION IN THE UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF CALIFORNIA JENS ERIK SORENSEN, as Trustee of SORENSEN RESEARCH AND DEVELOPMENT TRUST, Plaintiff, v. CONAIR CORPORATION, a Delaware Corporation; and DOES 1-100, Defendants. CONAIR CORPORATION, Date: September 26, 2008 Time: 11:00 am Courtroom 15, Fifth Floor Hon. Barry Ted Moskowitz NO ORAL ARGUMENT UNLESS REQUESTED BY THE COURT Case No. 08cv1256 BTM (CAB) NOTICE OF LODGING OF AUTHORITIES CITED IN SUPPORT OF CONAIR CORPORATION'S MOTION TO STAY THE LITIGATION PENDING THE OUTCOME OF REEXAMINATION PROCEEDINGS

17 Counter-Plaintiff, 18 19 20 21 22 23 24 v. JENS ERIK SORENSEN, as Trustee of SORENSEN RESEARH AND DEVELOPMENT TRUST, Counter-Defendant.

Case No. 08cv1256 BTM (CAB)

Case 3:08-cv-01256-BTM-CAB

Document 12-4

Filed 08/13/2008

Page 2 of 48

1 2 3 4 5 6 2 7 8 9 4 10 11 12 6 13 14 15 8 16 17 18 19 20 21 22 23 24 Dated: 9 7 5 3

Submitted herewith are true and correct copies of the following authorities cited in support of Conair Corporation's Motion to Stay the Litigation Pending the Outcome of Reexamination Proceedings: Exhibit 1 Authority Page

Manual of Patent Examining Procedure (Rev. 6, Sept. 2007) §§ 2250(III) and 2261 .........................................................1 Sorensen v. Black & Decker Corp., 2007 U.S. Dist. LEXIS 66712 (S.D. Cal. Sept. 10, 2007) ...................................6 SKF Condition Monitoring, Inc. v. SAT Corp., 2008 U.S. Dist. LEXIS 24310 (S.D. Cal. Feb. 26, 2008) ....................................12 Photoflex Prods., Inc. v. Circa 3 LLC, 2006 U.S. Dist. LEXIS 37743 (N.D. Cal. May 24, 2006) ...................................18 Nanometrics, Inc. v. Nova Measuring Instruments, Ltd., 2007 U.S. Dist. LEXIS 18785 (N.D. Cal. Feb. 26, 2007) ...................................21 Tse v. Apple, Inc., 2007 U.S. Dist. LEXIS 76521 (N.D. Cal. Oct. 4, 2007) ......................................24 Sorensen v. Digital Networks North America, Inc., 2008 U.S. Dist. LEXIS 6454 (N.D. Cal. Jan. 16, 2008) ......................................28 KLA-Tencor Corp. v. Nanometrics, Inc., 2006 U.S. Dist. LEXIS 15754 (N.D. Cal. Mar. 16, 2006) ...................................31 Sorensen v. Rally Mfg., Inc., Case No. 08cv305, Doc. #15 (S.D. Cal. Apr. 25, 2008) ......................................35 August 13, 2008 JACZKO GODDARD LLP NIRO SCAVONE HALLER & NIRO

By:

/s/ Allison H. Goddard Allison H. Goddard Attorneys for Defendant and Counter-Plaintiff CONAIR CORPORATION

-1-

Case No. 08cv1256 BTM (CAB)

Case 3:08-cv-01256-BTM-CAB

Document 12-4

Filed 08/13/2008

Page 3 of 48

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16

PROOF OF SERVICE I hereby certify that on August 13, 2008, I caused the foregoing NOTICE OF LODGING OF AUTHORITIES CITED IN SUPPORT OF CONAIR CORPORATION'S MOTION TO STAY THE LITIGATION PENDING THE OUTCOME OF

REEXAMINATION PROCEEDINGS to be electronically filed with the Clerk of the Court using the CM/ECF system which will send notification of such filing to: J. Michael Kaler (158296) KALER LAW OFFICES 9930 Mesa Rim Road, Suite 200 San Diego, California 92121 Phone: (858) 362-3151 Fax: (858) 824-9073 [email protected] Melody A. Kramer (169984) KRAMER LAW OFFICE 9930 Mesa Rim Road, Suite 1600 San Diego, California 92121 Phone: (858) 362-3150 Fax: (858) 824-9073 [email protected] Attorneys for Plaintiff

I certify that all parties in this case are represented by counsel who are CM/ECF 17 participants. 18 19 20 21 22 23 24 /s/ Allison H. Goddard Attorney for Conair Corporation

-2-

Case No. 08cv1256 BTM (CAB)

Case 3:08-cv-01256-BTM-CAB

Document 12-4

Filed 08/13/2008

Page 4 of 48

Exhibit 1

Case 3:08-cv-01256-BTM-CAB

Document 12-4

Filed 08/13/2008

Page 5 of 48

EXHIBIT 1 - Page 1

Case 3:08-cv-01256-BTM-CAB

Document 12-4

Filed 08/13/2008

Page 6 of 48

EXHIBIT 1 - Page 2

Case 3:08-cv-01256-BTM-CAB

Document 12-4

Filed 08/13/2008

Page 7 of 48

EXHIBIT 1 - Page 3

Case 3:08-cv-01256-BTM-CAB

Document 12-4

Filed 08/13/2008

Page 8 of 48

EXHIBIT 1 - Page 4

Case 3:08-cv-01256-BTM-CAB

Document 12-4

Filed 08/13/2008

Page 9 of 48

EXHIBIT 1 - Page 5

Case 3:08-cv-01256-BTM-CAB

Document 12-4

Filed 08/13/2008

Page 10 of 48

Exhibit 2

Case 3:08-cv-01256-BTM-CAB

Document 12-4

Filed 08/13/2008

Page 11 of 48

EXHIBIT 2 - Page 6

Case 3:08-cv-01256-BTM-CAB

Document 12-4

Filed 08/13/2008

Page 12 of 48

EXHIBIT 2 - Page 7

Case 3:08-cv-01256-BTM-CAB

Document 12-4

Filed 08/13/2008

Page 13 of 48

EXHIBIT 2 - Page 8

Case 3:08-cv-01256-BTM-CAB

Document 12-4

Filed 08/13/2008

Page 14 of 48

EXHIBIT 2 - Page 9

Case 3:08-cv-01256-BTM-CAB

Document 12-4

Filed 08/13/2008

Page 15 of 48

EXHIBIT 2 - Page 10

Case 3:08-cv-01256-BTM-CAB

Document 12-4

Filed 08/13/2008

Page 16 of 48

EXHIBIT 2 - Page 11

Case 3:08-cv-01256-BTM-CAB

Document 12-4

Filed 08/13/2008

Page 17 of 48

Exhibit 3

Case 3:08-cv-01256-BTM-CAB

Document 12-4

Filed 08/13/2008

Page 18 of 48

EXHIBIT 3 - Page 12

Case 3:08-cv-01256-BTM-CAB

Document 12-4

Filed 08/13/2008

Page 19 of 48

EXHIBIT 3 - Page 13

Case 3:08-cv-01256-BTM-CAB

Document 12-4

Filed 08/13/2008

Page 20 of 48

EXHIBIT 3 - Page 14

Case 3:08-cv-01256-BTM-CAB

Document 12-4

Filed 08/13/2008

Page 21 of 48

EXHIBIT 3 - Page 15

Case 3:08-cv-01256-BTM-CAB

Document 12-4

Filed 08/13/2008

Page 22 of 48

EXHIBIT 3 - Page 16

Case 3:08-cv-01256-BTM-CAB

Document 12-4

Filed 08/13/2008

Page 23 of 48

EXHIBIT 3 - Page 17

Case 3:08-cv-01256-BTM-CAB

Document 12-4

Filed 08/13/2008

Page 24 of 48

Exhibit 4

Case 3:08-cv-01256-BTM-CAB

Document 12-4

Filed 08/13/2008

Page 25 of 48

EXHIBIT 4 - Page 18

Case 3:08-cv-01256-BTM-CAB

Document 12-4

Filed 08/13/2008

Page 26 of 48

EXHIBIT 4 - Page 19

Case 3:08-cv-01256-BTM-CAB

Document 12-4

Filed 08/13/2008

Page 27 of 48

EXHIBIT 4 - Page 20

Case 3:08-cv-01256-BTM-CAB

Document 12-4

Filed 08/13/2008

Page 28 of 48

Exhibit 5

Case 3:08-cv-01256-BTM-CAB

Document 12-4

Filed 08/13/2008

Page 29 of 48

EXHIBIT 5 - Page 21

Case 3:08-cv-01256-BTM-CAB

Document 12-4

Filed 08/13/2008

Page 30 of 48

EXHIBIT 5 - Page 22

Case 3:08-cv-01256-BTM-CAB

Document 12-4

Filed 08/13/2008

Page 31 of 48

EXHIBIT 5 - Page 23

Case 3:08-cv-01256-BTM-CAB

Document 12-4

Filed 08/13/2008

Page 32 of 48

Exhibit 6

Case 3:08-cv-01256-BTM-CAB

Document 12-4

Filed 08/13/2008

Page 33 of 48

EXHIBIT 6 - Page 24

Case 3:08-cv-01256-BTM-CAB

Document 12-4

Filed 08/13/2008

Page 34 of 48

EXHIBIT 6 - Page 25

Case 3:08-cv-01256-BTM-CAB

Document 12-4

Filed 08/13/2008

Page 35 of 48

EXHIBIT 6 - Page 26

Case 3:08-cv-01256-BTM-CAB

Document 12-4

Filed 08/13/2008

Page 36 of 48

EXHIBIT 6 - Page 27

Case 3:08-cv-01256-BTM-CAB

Document 12-4

Filed 08/13/2008

Page 37 of 48

Exhibit 7

Case 3:08-cv-01256-BTM-CAB

Document 12-4

Filed 08/13/2008

Page 38 of 48

EXHIBIT 7 - Page 28

Case 3:08-cv-01256-BTM-CAB

Document 12-4

Filed 08/13/2008

Page 39 of 48

EXHIBIT 7 - Page 29

Case 3:08-cv-01256-BTM-CAB

Document 12-4

Filed 08/13/2008

Page 40 of 48

EXHIBIT 7 - Page 30

Case 3:08-cv-01256-BTM-CAB

Document 12-4

Filed 08/13/2008

Page 41 of 48

Exhibit 8

Case 3:08-cv-01256-BTM-CAB

Document 12-4

Filed 08/13/2008

Page 42 of 48

EXHIBIT 8 - Page 31

Case 3:08-cv-01256-BTM-CAB

Document 12-4

Filed 08/13/2008

Page 43 of 48

EXHIBIT 8 - Page 32

Case 3:08-cv-01256-BTM-CAB

Document 12-4

Filed 08/13/2008

Page 44 of 48

EXHIBIT 8 - Page 33

Case 3:08-cv-01256-BTM-CAB

Document 12-4

Filed 08/13/2008

Page 45 of 48

EXHIBIT 8 - Page 34

Case 3:08-cv-01256-BTM-CAB

Document 12-4

Filed 08/13/2008

Page 46 of 48

Exhibit 9

Case 3:08-cv-01256-BTM-CAB

Document 12-4

Filed 08/13/2008

Page 47 of 48

EXHIBIT 9 - Page 35

Case 3:08-cv-01256-BTM-CAB

Document 12-4

Filed 08/13/2008

Page 48 of 48

EXHIBIT 9 - Page 36