Judge Stark grants mandatory and discretionary stays pending an ITC investigation

In Graphic Properties Holdings, Inc. v. Toshiba America Information Systems, Inc., et al., C.A. No. 12-213-LPS (D. Del. Mar. 5, 2014), Judge Leonard P. Stark granted stays pending an ITC investigation in three separate actions that plaintiff Graphic Properties Holdings, Inc. (“GPH”) had filed against various defendants: C.A. No. 12-213-LPS (the “Toshiba action”); C.A. 12-214-LPS (the “Vizio action”); C.A. No. 12-210-LPS (the “ASUS action”). In the Toshiba and Vizio actions, GPH was asserting both U.S. Patent Nos. 8,144,158 (the “’158 Patent”) and U.S. Patent No. 6,650,327 (the “’327 Patent”). In the ASUS action, GPH asserted only the ’158 Patent. Id. at 1. Because the products accused of infringing the ’327 Patent appeared to be the same products at issue in the ITC investigation, and because the defendants in the Toshiba and Vizio action moved for stay within 30 days after being named respondents in the ITC action, Judge Stark granted a mandatory stay of the Toshiba and Vizio actions pursuant to 28 U.S.C § 1659(a) with respect to the ’327 Patent. Id. at 2.

Judge Stark also granted discretionary stays in the Toshiba, Vizio, and Asus actions with respect to the ’158 Patent. As Judge Stark explained, “the ‘158 Patent is a continuation of the ‘327 Patent and they share common inventors, specification, and prosecution history. Because of this overlap, claim construction and invalidity issues with respect to one patent will necessarily impact those same issues with respect to the other patent.” Id. at 3. Further, GPH agreed that its “general theory of infringement regarding the ’158 Patent is common” to the district court and ITC Action, and many of the accused products “share critical components.” Id. at 3. Accordingly, Judge Stark found that in granting stay “GPH will not have to engage in duplicative discovery and other pretrial matters.” Id. at 4. Judge Stark similarly found that the discretionary stay would simplify matters for trial, as the Court would “not have to engage in duplicative proceedings regarding the ‘158 Patent that could be held in conjunction with the ‘327 Patent.” Id. In granting the discretionary stay, Judge Stark also noted that no trial date was set and discovery was not complete. Id. at 4-5. Further, as Judge Stark explained, GPH did not market any products covered by the ’158 Patent, and therefore would not be competitively disadvantaged by the stay. Id. at 4.

Graphic Properties Holdings, Inc. v. Toshiba America Information Systems, Inc., et al., C.A. No. 12-213-LPS…

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