Free Motion to Stay - District Court of California - California

Case 3:07-cv-02121-BTM-CAB

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Filed 12/10/2007

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J. CHRISTOPHER JACZKO (149317) ALLISON H. GODDARD (211098) JACZKO GODDARD LLP 4401 Eastgate Mall San Diego, CA 92121 Telephone: (858) 404-9205 Facsimile: (858) 225-3500 DALE LISCHER (Admitted Pro Hac Vice) ELIZABETH G. BORLAND (Admitted Pro Hac Vice) KERRI A. HOCHGESANG (Admitted Pro Hac Vice) SMITH, GAMBRELL & RUSSELL, LLP Promenade II, Suite 3100 1230 Peachtree St. N.E. Atlanta, GA 30309 Telephone: (404) 815-3500 Facsimile: (404) 685-6945 Attorneys for Defendant GIANT INTERNATIONAL (USA) LTD.

UNITED STATES DISTRICT COURT 13 FOR THE SOUTHERN DISTRICT OF CALIFORNIA 14 15 16 Plaintiff, 17 v. 18 19 20 21 22 23 Cross-Complainant, 24 v. 25 26 27 Cross-Defendant. 28 JENS ERIK SORENSEN, as Trustee of SORENSEN RESEARCH AND DEVELOPMENT TRUST, GIANT INTERNATIONAL (USA) LTD., a Delaware corporation, GIANT INTERNATIONAL (USA) LTD., a Delaware corporation, and DOES 1-10, Defendants. JENS ERIK SORENSEN, as Trustee of SORENSEN RESEARCH AND DEVELOPMENT TRUST, ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) 1 No. 07-CV-02121-BTM-CAB NOTICE OF MOTION AND DEFENDANT'S MOTION TO STAY PENDING OUTCOME OF REEXAMINATION PROCEEDINGS NO ORAL ARGUMENT UNLESS REQUESTED BY THE COURT Date: February 8, 2008 Time: 11:00 am Courtroom 15 - 5th Floor

Case No. 07-CV-02121-BTM-CAB

Case 3:07-cv-02121-BTM-CAB

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Filed 12/10/2007

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NOTICE IS HEREBY GIVEN that on February 8, 2008 at 11:00 am, 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 Giant International (USA) Ltd., will and hereby respectfully does move for a stay of the above-captioned proceeding pending the ongoing United States Patent & Trademark Office ("PTO") reexamination of the patent in suit, U.S. Patent No. 4,934,184 (the "'184 Patent"). Defendant's counsel conferred with Plaintiff's counsel regarding a stay prior to filing this motion, but Plaintiff has refused to consent to a stay. A stay of the present litigation is particularly warranted given that this Court has already stayed the related, earlier-filed case of Sorensen v. Black and Decker Corp., Case No. 06cv1572BTM (CAB) as a result of the pending reexamination. See Sorensen v. Black & Decker Corp., 2007 WL 2696590 (S.D. Cal. Sept. 10, 2007). It would waste judicial resources to proceed forward with this case while staying a case that involves the very same patent. In addition, this case is in its infancy. The complaint was filed on November 6, 2007. Defendant's answer and counterclaim was filed on December 3, 2007, and Plaintiff's reply to counterclaim was filed on December 4, 2007. The parties have not yet had their early neutral evaluation conference, and no discovery has been taken. Because the patent in suit may not survive the PTO's reexamination, which would negate the basis of this lawsuit, it will conserve the parties' resources to stay this litigation until the reexamination has been concluded. Moreover, the `184 Patent will expire in less than three months such that even if the Patent were to survive the pending reexamination and Plaintiff were to prove infringement against Giant, Plaintiff would only be entitled to damages, not injunctive relief. prejudiced by the stay. This motion is based on this Notice of Motion and Motion, the accompanying Memorandum of Points and Authorities in Support thereof, the Declaration of Allison H. Goddard, all of which have been filed and served concurrently with this Notice of Motion and Motion, on the papers and records on file in this action, and on such other and further oral and documentary evidence as the Court may consider at the time of the hearing. Thus, Plaintiff will not be

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Case 3:07-cv-02121-BTM-CAB

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Filed 12/10/2007

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For the reasons set forth in greater detail in the supporting memorandum, Defendant respectfully requests that the Court order this case stayed pending completion of the PTO's ongoing reexamination of the `184 Patent.

December 10, 2007

JACZKO GODDARD LLP SMITH, GAMBRELL & RUSSELL, LLP

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s/Allison H. Goddard Allison H. Goddard Attorneys for Defendant GIANT INTERNATIONAL (USA) LTD.

Case No. 07-CV-02121-BTM-CAB

Case 3:07-cv-02121-BTM-CAB

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Sorensen v. Giant International (USA) Ltd. USDC Case No. 07cv02121 BTM (CAB)

Certificate of Service The undersigned hereby certifies that all counsel of record who are deemed to have consented to electronic service are being served this 10th day of December, 2007, with a copy of this document via the Court's CM/ECF system. I certify that all parties in this case are represented by counsel who are CM/ECF participants. Any other counsel of record will be served by electronic mail, facsimile transmission, and/or first class mail on the following business day.

/s/ Allison H. Goddard

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Case No. 07-CV-02121-BTM-CAB