Appealing A Stay Pending Reexamination?

Posted on | February 10, 2010 | 4 Comments

2010-1142 Sorensen v. Dorman Products
SD/CA 09-cv-1579
Judge Barry Ted Moskowitz

Pantentee Sorensen (sometimes also spelled “Sorenson”) attempts to appeal from the Order of Judge Barry Moskowitz granting defendants’ motion to stay the case pending reexamination of patent no. 4,935,184.  The Court did deny defendants’ motions to dismiss or to transfer in favor of the first-filed declaratory judgment action in the Eastern District of Pennsylvania.

Stay: Orders granting motions to stay pending reexamination are not generally considered “final” and are therefore not generally appealable.  See, e.g., Gould v. Control Laser Corp., 705 F.2d 1340 (Fed. Cir. 1983); Soliami v. Kennametal, 2008-1345 (Fed. Cir. 2008).  Indeed, Dorman has filed a motion to dismiss the appeal.

“Generally,” I write, because an exception exists where the stay “effectively could put one of the appellants out of court” or if some “patent issue would escape review by a federal court if the case is stayed.”  See, e.g., Slip Track Sys., Inc. v. Metal Lite, Inc., 159 F.3d 1337, 1340 (Fed. Cir. 1998).  There is nothing in the record to indicate whether any facts supporting the exception exists here, so the appeal may not stick around.

Dismiss/Transfer: Although not being appealed, the decision is interesting in that it explains that the “first to file rule” is not really a rule but a guide.  The Court declined to dismiss or transfer in favor of the earlier case because, in part, the Court has 30 other cases involving the ‘184 patent, and therefore judicial economy, etc. favor keeping the case.  Order, pp. 4-5.

Failure to State a Claim: The Court also rejected defendants’ argument that the Complaint was too vague and unspecific to state a patent infringement claim under the “heightened” pleading requirements from the Supreme Court’s decisions in Twombly and Iqbal.  Judge Moskowitz wrote:

The Federal Circuit, in a post-Twombly decision, stated that the following allegations were sufficient to state a cause of action for patent infringement: “(1) an allegation of jurisdiction; (2) a statement that the plaintiff owns the patent; (3) a statement that defendant has been infringing the patent by making, selling, and using [the device] embodying the patent; (4) a statement that the plaintiff has given the defendant notice of its infringement; and (5) a demand for an injunction and damages.” McZeal v. Sprint Nextel Corp., 501 F.3d 1354, 1356–57 (Fed. Cir. 2007). Plaintiff has pled facts supporting each of these elements, and has identified two specific products—the “Ergo Stripper” and the “Crimper”—that allegedly infringe on Plaintiff’s ‘184 Patent. The alleged facts are plausible, sufficiently specific, and form an adequate basis for Plaintiff’s infringement claim. See Bender v. Broadcom Corp., No. 09cv1147 MHP, 2009 WL 3571286, at *4 (N.D. Cal. Oct. 30, 2009) (denying motion to dismiss under Twombly and Iqbal standard even where complaint listed virtually all defendant’s products because list could include infringing products).

Order, p. 2.

2010-1142 Order

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