Free Motion to Stay - District Court of California - California

Case 3:07-cv-02277-BTM-RBB

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Filed 01/28/2008

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ALAN A. LIMBACH (Bar No. 173059) [email protected] ELIZABETH DAY (Bar No. 177125) [email protected] GREGORY J. LUNDELL (Bar No. 234941) [email protected] DLA PIPER US LLP 2000 University Avenue East Palo Alto, CA 94303-2214 Tel: 650.833.2000 Fax: 650.833.2001 Attorneys for Defendant ESSEPLAST USA (NC), INC. UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF CALIFORNIA JENS ERIK SORENSEN, as Trustee of SORENSEN RESEARCH AND DEVELOPMENT TRUST, Plaintiff, CV NO. 07-cv-2277 BTM (CAB) NOTICE OF MOTION AND DEFENDANT ESSEPLAST'S MOTION TO STAY THE LITIGATION PENDING REEXAMINATION OF U.S. PATENT NO. 4,935,184 Date: March 14, 2008 Time: 11 a.m. Courtroom 15, Fifth Floor Hon. Barry Ted Moskowitz NO ORAL ARGUMENT UNLESS REQUESTED BY THE COURT NOTICE IS HEREBY GIVEN that on March 14, 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, the Defendant in this action, Esseplast USA (NC), Inc. ("Esseplast"), will and hereby do respectfully move to stay the above-captioned proceeding pending the United States Patent and Trademark Office's ("PTO") reexamination of the sole patent asserted in this case, United States Patent No. 4,935,184 ("the '184 patent"). A stay of the present litigation is particularly warranted given the current state of this case. No trial date has been set. The parties have not begun fact or expert discovery. The Court has -1PA\10535704.1

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ESSEPLAST'S NOTICE OF MOTION TO STAY LITIGATION PENDING REEXAMINATION; Case No. 07-CV-2277 BTM (CAB)

Case 3:07-cv-02277-BTM-RBB

Document 13

Filed 01/28/2008

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not conducted a Markman hearing or construed the terms of the '184 patent. In fact, the only actions taken thus far by the parties in addition to this motion are Plaintiff Jens Erik Sorensen, as Trustee of the Sorensen Research and Development Trust's ("Sorensen") filing of the Complaint for infringement and Esseplast's filing of its Answer and Counterclaims. Therefore, a stay will conserve the resources of both the Court and the parties, and will also provide the benefit of simplifying (if not eliminating) the issues for trial. Given that the '184 patent will be expiring in approximately one week and the parties have not begun discovery, Sorensen would not be prejudiced in any way by entry of an order staying the present litigation pending the PTO's reexamination of the '184 patent. For the reasons set forth in greater detail in the supporting memorandum and related pleadings submitted herewith, Esseplast respectfully requests that the Court order this case stayed pending completion of the PTO's ongoing reexamination of the '184 patent. Dated: January 28, 2008 DLA PIPER US LLP By /s/ Alan Limbach ALAN LIMBACH ELIZABETH DAY GREGORY LUNDELL Attorneys for Defendant ESSEPLAST (USA) NC, INC. I certify that all parties in this case are represented by counsel who are CM/ECF participants. /s/ Gregory J. Lundell Attorney for Defendant Esseplast

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ESSEPLAST'S NOTICE OF MOTION TO STAY LITIGATION PENDING REEXAMINATION; Case No. 07-CV-2277 BTM (CAB)

Case 3:07-cv-02277-BTM-RBB

Document 13

Filed 01/28/2008

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PROOF OF SERVICE I hereby certify that on January 28, 2008, I caused the foregoing DEFENDANT ESSEPLAST'S NOTICE OF MOTION TO STAY LITIGATION PENDING REEXAMINATION OF U.S. PATENT NO. 4,935,184 to be electronically filed with the Clerk of the Court using the CM/ECF system which will send notification of such filing to: Attorneys for Plaintiff J. Michael Kaler (158296) KALER LAW OFFICES 9930 Mesa Rim Road, Suite 200 San Diego, CA 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, CA 92121 Phone: (858) 362-3150 Fax: (858) 824-9073 [email protected] I certify that all parties in this case are represented by counsel who are CM/ECF participants.

/s/ Gregory J. Lundell Attorneys for Esseplast USA (NC), Inc.

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ESSEPLAST'S NOTICE OF MOTION TO STAY LITIGATION PENDING REEXAMINATION; Case No. 07-CV-2277 BTM (CAB)