United States District Court, D. Nevada
NEW VISION GAMING AND DEVELOPMENT, INC., a Massachusetts corporation, Plaintiff,
BALLY GAMING INC, dba BALLY TECHNOLOGIES, a Nevada corporation, Defendant.
ANDERSEN, ESQ. Nevada State Bar No. 10306 SAMUEL G. BROYLES,
JR., ESQ. APC Nevada State Bar No. 5888 ANDERSEN &
BROYLES, LLP Attorneys for Plaintiff, NEW VISION GAMING, INC.
PISANELLI BICE PLLC M. Magali Mercera James J. Pisanelli,
Esq. M. Magali Mercera, Esq.
PERKINS COIE LLP John H. Gray Jessica L. Everett-Garcia John
H. Gray Nathan R. Kassebaum (admitted pro hac vice) Attorneys
for Defendant and Counterclaimant Bally Gaming, Inc
STIPULATION AND ORDER TO STAY PENDING RESOLUTION OF
NEW VISION'S MOTION TO DISMISS
to LR 7-1 and LR IA 6-2, Defendant Bally Gaming, Inc.
(“Bally”) and Plaintiff New Vision Gaming and
Development, Inc. (“New Vision”), by and through
their counsel, hereby jointly request that the Court stay
discovery between the parties, disclosures, and the filing of
a proposed case schedule in this matter pending this
Court's resolution on New Vision's Motion to Dismiss
(ECF No. 14).
support of this stipulation, the parties state as follows.
September 29, 2017, Bally filed an Answer that asserted six
counterclaims against New Vision: (1) Declaration of Patent
Invalidity; (2) Material Breach of Contractual Warranties;
(3) Mistake; (4) Unjust Enrichment; (5) Breach of the Implied
Covenant of Good Faith and Fair Dealing; and (6) Contractual
Declaratory Relief. (ECF No. 7). These counterclaims relate
to the same central issue that New Vision's complaint
raises: whether and to what extent Bally owes New Vision
royalties on the parties' patent license agreement.
October 20, 2017, New Vision filed a Motion to Dismiss all of
Bally's counterclaims except (1) Declaration of Patent
Invalidity. (ECF No. 14). The parties have held their Rule
26(f) conference and have agreed that the Court should stay
discovery between the parties and disclosures, pending a
ruling on the Motion.
parties were finalizing this stipulation yesterday afternoon,
the Court issued a scheduling order, which, among other
things, set a deadline of December 5, 2017 by which to hold a
Rule 26(f) conference (ECF No. 21).
GOOD CAUSE EXISTS TO STAY DISCOVERY
Court has “wide discretion in controlling
discovery” and should stay or control discovery pending
a decision on a motion if doing so would further the
“goal of efficiency for the court and litigants.”
Little v. City of Seattle, 863 F.2d 681, 685 (9th
Cir. 1988). New Vision's Motion to Dismiss is based on
Rules 12(b)(1) and 12(b)(6). (ECF No. 14 at 2). While the
parties dispute whether New Vision's Motion to Dismiss
has merit, the parties agree that the Court's ruling
granting or denying the Motion could clarify issues
with respect to contract interpretation and damages relevant
to both the overlapping claims and counterclaims.
This, in turn, would guide and potentially significantly
narrow the scope of relevant discovery. This would be
consistent with Rule 1's directive to “secure the
just, speedy, and inexpensive determination of every
action.” Fed.R.Civ.P. 1.
Bally informs the Court that it is planning to file a
Petition for a Covered Business Method Patent Review (CBM)
with the Patent and Trademark Office, arguing that each of
the licensed patents is directed to patent-ineligible subject
matter under 35 U.S.C. § 101 and is thus invalid.
Accordingly, shortly after filing the CBM petitions, Bally
intends to seek a stay of this proceeding pursuant to §
18(b)(1) of the America Invents Act (AIA), Pub L. No. 112-29,
125 Stat. 284, 329-31 (2011). At this time, however, the
parties have not entered into any stipulations regarding a
further stay based on Bally's anticipated CBM petitions
and simply agree that a stay pending review of the motion to
dismiss would further judicial economy.
would make little sense to engage in extensive discovery now,
only to have that discovery mooted by the Court's
decision on New Vision's Motion to Dismiss. The parties
will be better equipped to propose a more efficient schedule
in the future. However, Local Patent Rule 1-23 dictates that,
absent a stay, all fact and expert discovery would end on
June 26, 2018, and the Court's recently issued scheduling
order (ECF No. 21) has discovery closing on February 28,
2018. Under either timeline, the parties would need to engage
in expensive discovery almost immediately. Adding to the
burden and inefficiency, the parties would have to serve
patent invalidity and infringement contentions in the near