United States District Court, D. Nevada
JOINT MOTION TO REINSTATE THE STAY OF PROCEEDINGS AND
R. HICKS UNITEDRSTATESSDISTRICT JUDGE
Server Technology, Inc. (“STI”) and defendants
American Power Conversion Corporation and Schneider Electric
IT Corporation (collectively, “APC”) respectfully
submit the following joint motion to reinstate the stay of
proceedings in this case. The stay initially was entered by
order dated October 6, 2015 (ECF. No. 36).
March 10, 2017, the Court lifted the stay in this case and
asked the parties to file a status report (ECF No. 41), which
is being filed concurrently with this motion. The parties
understand that in light of the conclusion of the appeal in
STI I and the proceedings on remand, the Court
lifted the stay. Nonetheless, for the reasons set forth
below, the parties respectfully request that the stay be
support of this motion, the parties state the following:
is an action for claims of patent infringement. Here, STI
alleges that APC through the use, manufacture, distribution,
and sale of its power distribution units, has directly
infringed claim 15 of both U.S. Patent No. 7, 043, 543
(“the ‘543 patent”) and U.S. Patent No. 7,
702, 771 (“the ‘771 patent”).
same patent claims (claim 15 of both the ‘543 patent
and ‘771 patent) were previously asserted against
different APC products in a related patent infringement case
between the same parties, Server Technology, Inc. v.
American Power Conversion Corporation, Case No.
3:06-CV-00698-LRH-VPC (D. Nev.) (“STI
I”) (Hicks, J.).
that case, after a jury trial, the claims were determined to
be infringed, not invalid, and not unenforceable. The Court
entered judgment regarding the infringement, validity, and
enforceability of those claims. APC appealed the case to the
United States Court of Appeals for the Federal Circuit, which
reversed and remanded the case for retrial. Case No. 15-1605.
The parties have since submitted a proposed scheduling order
to govern that case.
of the patent claims at issue in this action, claim 15 of the
‘543 patent, also is the subject of a reexamination
proceeding in the U.S. Patent and Trademark Office that was
initiated by APC, American Power Conversion Corporation
v. Server Technology, Inc., Inter Partes
Reexamination Control No. 95/001, 485 (filed Nov. 12, 2010)
(“Reexamination”). On September 29, 2015, the
Patent Trial and Appeal Board issued an opinion finding that
claim, and others, invalid. That order is subject to further
proceedings in the Patent Office and is not yet appealable to
the United States Court of Appeals for the Federal Circuit.
While STI I was on appeal, the parties requested
that the Court stay the present case, pending resolution of
the appeal in STI I and the Reexamination. (ECF No.
35). The parties pointed out that the validity of the patent
claims asserted in this action (solely claim 15 of the
‘543 and ‘771 patents) will be directly impacted
by the outcome of STI I and/or the Reexamination
proceedings. (Id.) The parties further agreed that
resolution of the validity issues would possibly determine
the outcome of this action (if the claims are ultimately
found invalid) or, at a minimum, may create an opportunity
for settlement of the present case. (Id.).
Court agreed and granted the requested stay. (ECF No. 36.)
appeal in STI I has since concluded, and on March
10, 2017, the Court lifted the present stay and instructed
the parties to file a joint status report. (ECF No. 41.)
discussed below, and in the concurrent joint status report,
the parties believe that the Court should reinstate the stay
of proceedings in this case pending resolution of STI
I and the Reexamination.
district court has the inherent power to stay its
proceedings. E.g., Landis v. N. Am. Co.,
299 U.S. 248, 254 (1936) (The “power to stay
proceedings is incidental to the power inherent in every
court to control the disposition of the causes on its docket
with economy of time and effort for itself, for counsel, and
for litigants.”); see also Unwired Planet, LLC v.
Google Inc., No. 3:12-CV-00504-MMD-VP, 2014 WL 301002,
at *4-5 (D. Nev. Jan. 27, 2014) (Du, J.) (“Courts need
not expend unnecessary judicial resources by attempting to
resolve claims which may be amended, eliminated or lucidly
narrowed by the patent reexamination process and the
expertise of its officers.”) (quotation omitted).
previously held, the present case involves STI's
allegation that APC infringes the same claims of the same
patents asserted in STI I. The present case involves
a different series of allegedly infringing products-the APC
AP8600 series of power distribution units-and the issue of
infringement in this case may depend on facts specific to the