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Irwin Industrial Tool Co. v. Milwaukee Electric Tool Corp.

United States District Court, D. Massachusetts

April 28, 2016





This case involves a claim of patent infringement by Irwin Industrial Tool Company d/b/a Lenox (“Lenox” or “Plaintiff”) against Milwaukee Electric Tool Corporation (“Milwaukee” or “Defendant”). Plaintiff, the manufacturer of Lenox Speed Slot® hole saws, alleges that Defendant has infringed U.S. Patent Nos. 8, 579, 554 (the “’554 Patent”) and 8, 579, 555 (the “’555 Patent”) by offering a similar product. The case is presently before the court on a motion by Defendant to stay this litigation pending final resolution of an inter partes review proceeding (“IPR”) being conducted by the United States Patent Trial and Appeal Board (“PTAB”) (Dkt. No. 48). The motion to stay, which was referred to the undersigned for decision, was heard on February 3, 2016 (Dkt. No. 52).

For the reasons set forth herein, the court grants Defendant’s motion and stays this matter through resolution of the pending IPR proceeding only. Absent further order of the court, the stay will not remain in effect during an appeal, if any, from the PTAB’s final IPR ruling. The parties shall file a joint status report within ten days after the conclusion of the PTAB review informing the court of the PTAB’s decision, and, if applicable, requesting that the court lift the stay.


Lenox filed its complaint against Milwaukee on January 8, 2015, claiming infringement of the ’554 and ’555 Patents by Milwaukee’s sale, manufacture, use, and/or importation of Hole Dozer™ Bi-metal hole saws (Dkt. No. 1, ¶¶ 5, 14). Lenox claimed that Milwaukee’s line of Hole Dozer™ Bi-metal hole saws copied the staircase slot of the Lenox Speed Slot® line of hole saws (id.). As evidence of infringement, Plaintiff has pointed to two YouTube videos of the Defendant promoting its Hole Dozer™ line as competing directly with the Plaintiff’s Speed Slot® line of hole saws (Dkt. No. 56 at 8). Lenox asserts that as a result of the competition from Milwaukee selling its copycat Hole Dozer™ product line, Lenox had to re-evaluate its position in the marketplace to remain competitive with its customer base (id.).

In June 2015, Milwaukee filed two IPR petitions with the United States Patent and Trademark Office (“USPTO”) requesting the USPTO’s review of the validity of the Lenox ’554 and ’555 Patents (Dkt. No. 49 at 5). See 35 U.S.C. § 315(b). Milwaukee contends that the IPR petitions identified numerous prior art references that invalidated nearly all of the Lenox ’554 and ’555 Patent claims. On November 30, 2015, the PTAB granted Milwaukee’s petitions and formally instituted reviews of 69 of the 71 claims in the ’554 and ’555 Patents, having determined that there was a “reasonable likelihood” that Milwaukee would prevail on its challenge to the claims (id.).

On December 9, 2015, following the PTAB’s grant of review, Defendant filed a motion to stay this case pending the PTAB’s ruling in the IPR proceeding (Dkt. No. 48). On the same date, Milwaukee filed a request for a rehearing with the PTAB, asserting that it had mistakenly omitted two claims in the ’555 Patent when it issued its prior decision to institute review of 69 of 71 claims. (Dkt. No. 68 at 1). Milwaukee maintained that the omission was due to a typographical error in the IPR petition (id.). On January 15, 2016, following rehearing, the PTAB agreed with Milwaukee that a typographical error had caused the PTAB to overlook two claims in the ’555 Patent. Accordingly, the PTAB formally included the two omitted claims in the ’555 Patent in its decision to institute review (Dkt. No. 68-1 at 3). This ruling resulted in the decision by the PTAB to institute review of all claims in the ’554 and the ’555 Patents (id.).


“Congress recently created the inter partes review process through the America Invents Act of 2001, 35 U.S.C. §§ 311-319.” Aplix IP Holdings Corp. v. Sony Comput. Entm’t, Inc., Civ. No. 14-cv-12745-MLW, 2015 WL 5737145, at *1 (D. Mass. Sept. 28, 2015). “IPR is an expedited procedure for challenging the validity of a patent before the PTO and its Patent Trial and Appeal Board[.]” ACQIS, LLC v. EMC Corp., 109 F.Supp. 3d 352, 355 (D. Mass. 2015). Under a statutorily mandated schedule, the PTAB generally must reach a decision within one year of the granting of a petition for IPR. See id (citing 35 U.S.C. § 316(a)(11)).

“’Courts have inherent power to manage their dockets and stay proceedings, including the authority to order a stay pending conclusion of a PTO [examination].’” Verinata Health, Inc. v. Ariosa Diagnostics, Inc., No. C 12-05501 SI, 2014 WL 1211640, at *1 (N.D. Cal. Jan. 13, 2014) (quoting Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1426-27 (Fed. Cir. 1988)). “Whether or not to grant a stay is within the Court’s discretion.” ACQIS, 109 F.Supp. 3d at 356. Courts consider three factors in deciding whether a case should be stayed while the PTAB is conducting a related IPR proceeding: (1) the stage of the litigation, including whether discovery is complete and a trial date has been set; (2) whether a stay will simplify the issues in question and the trial of the case; and (3) whether a stay will unduly prejudice or present a clear tactical disadvantage to the nonmoving party. An analysis should consider the totality of the circumstances, and, while prior decisions may prove instructive, the inquiry is intended to be case specific. See, e.g., Id. For the reasons set forth below, the court concludes that here, two of the factors strongly favor entry of a stay and the third factor, while it may weigh slightly against a stay, does not carry sufficient weight to warrant denial of a stay pending the conclusion of the IPR proceeding currently pending before the PTAB.

1. The litigation is in its early stages

The first issue this court should consider in determining whether to grant a stay pending IPR is whether discovery is complete and a trial date has been set. See, e.g., id. “This inquiry is aimed at determining ‘whether litigation has progressed significantly enough for a stay to be disfavored.’” Id. (quoting PersonalWeb Techs., LLC v. Apple Inc., 69 F.Supp. 3d 1022, 1025 (N.D. Cal. 2014)). “’The earlier the stage of proceedings, the greater the reason to grant a stay’” id. (quoting SurfCast, Inc. v. Microsoft Corp., No. 2:12-CV-333, 2014 WL 6388489, at *2 (D. Me. Nov. 14, 2014)), because “[s]taying a case that is in an early stage of litigation ‘advance[s] judicial efficiency and maximize[s] the likelihood that neither the Court nor the parties expend their assets addressing invalid claims.’” Destination Maternity Corp. v. Target Corp., 12 F.Supp. 3d 762, 770 (E.D. Pa. 2014) (quoting SenoRx, Inc. v. Hologic, Inc., No. 12-173, 2013 WL 144255, at *5 (D. Del. Jan. 11, 2013)) (alterations in original). In AQCIS, the court held that this factor weighed moderately in favor of a stay where document and written discovery were underway, a Markman hearing had taken place, and a claim construction opinion had been issued, but no depositions had been taken, expert discovery had not begun, summary judgment motions had not been prepared or filed, and no viable trial date had been set. See ACQIS, 109 F.Supp. 3d at 356-57.

By patent litigation standards, the proceedings in the instant case are at a very early stage: discovery has just begun, no Markman hearing has been held, no claim construction pleadings have been filed or considered by the court, and no trial date has been set. The case has not progressed past the initial stages such that a stay is not appropriate. Indeed, “[c]ourts have frequently granted motions to stay pending inter partes review at similar or more advanced stages of litigation.” Aplix, 2015 WL 5737145, at *2 (citing cases). There is much more work ahead for the parties and this court than behind the parties and this court. See Air Vent, Inc. v. Owens Corning Corp., No. ...

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