(PS) American Int'l Industries v. Stiles ( 2020 )

1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 FOR THE EASTERN DISTRICT OF CALIFORNIA 10 11 AMERICAN INTERNATIONAL No. 2:19-cv-01218-KJM-DMC INDUSTRIES, 12 Plaintiff, 13 ORDER v. 14 SHARIDAN STILES, 15 Defendant. 16 17 18 Before the court is the parties’ joint status report and request to stay this action 19 pending the result of dispositive motions in a related case. Joint Status Report, ECF No. 37. For 20 the reasons described below, the court GRANTS the parties’ joint request to stay the case. 21 I. FACTUAL AND PROCEDURAL BACKGROUND 22 This multi-action patent infringement dispute between plaintiff American International 23 Industries (AII) and defendant Sharidan Stiles (Stiles) regarding the manufacture and sale of 24 plaintiff’s personal razor products has lasted nearly six years. Compl. ¶ 1, ECF No. 1. On 25 September 25, 2014, Stiles filed a complaint in this district against plaintiff and its retailer, Wal- 26 Mart Stores. Id. That complaint was previously before another court in this district, but it has 27 now been related to this case and is also before this court. See Stiles v. Walmart Stores, Inc. et 28 al., E.D. Cal. Case No. 14-cv-22345-KJM-DMC (“Main Action”); see also Order, ECF No. 15. 1 The Main Action involves infringement claims for Stiles’ U.S. Patent No. 9,108,329 and U.S. 2 Patent No. D542,468, antitrust claims, and unfair competition claims. 3 On June 6 and 7, 2019, Stiles filed three actions in the Eastern District of Texas against 4 AII’s retailers: Target, CVS, HEB and Walmart. Joint Status Report at 2. Those three actions 5 involve infringement claims for Stiles’ ’329 Patent, as well as the ’689 Patent at issue in this 6 action. 7 On July 1, 2019, AII filed the complaint in this action. Compl. at 1. AII seeks a 8 declaratory judgment of non-infringement and invalidity of Stiles’ U.S. Patent No. 9,707,689, 9 which “is a continuation of the ’329 patent at issue in the Main Action.” Joint Status Report at 2; 10 see also Compl. ¶ 9. 11 II. LEGAL STANDARD 12 A district court has the authority to issue a discretionary stay of a case pending 13 before it “by virtue of its inherent power to control the progress of the cause so as to maintain the 14 orderly processes of justice.” Ryan v. Gonzales, 568 U.S. 57, 74 (2013) (quoting Enelow v. New 15 York Life Ins. Co., 293 U.S. 379, 382 (1935)); see also Landis v. N. Am. Co., 299 U.S. 248, 254 16 (1936) (Power to stay is “incidental to the power inherent in every court to control the disposition 17 of the causes on its docket with economy of time and effort for itself, for counsel, and for 18 litigants.”). Whether to stay a case is an “exercise of judgment, which must weigh competing 19 interests and maintain an even balance.” Landis, 299 U.S. at 254–55. 20 III. DISCUSSION 21 As the parties state in the Joint Status Report, the ’329 Patent in the Main Action 22 and the ’689 Patent here are related. Joint Status Report at 3. The ‘689 Patent here is “directed to 23 a razor for removing unwanted hair from the body and is a continuation patent claiming priority 24 to U.S. Patent Application Number 11/775,688 issued as U.S. Patent No. 9,108,329 (“the ’329 25 Patent”) on August 18, 2015.” Compl. ¶ 11. As a continuation of the ’329 Patent, the ’689 Patent 26 is identical to the ‘329 Patent and the patent claims for both “are substantially similar in scope.” 27 Id. 28 ///// 1 The parties argue these similarities show that questions “in the Main Action 2 relating to validity of Stiles’ ’329 Patent and infringement of the ’329 Patent by the ‘Ardell 3 Precision Shaper’ may significantly impact or even moot the claims at issue in the present 4 action.” Joint Status Report at 3. As a result, the parties agree the dispute about the ’329 Patent 5 in the Main Action should go forward “prior to active litigation of the present action, in order to 6 save substantial court and attorney resources, avoid duplication of efforts and facilitate more 7 uniform control of the litigation.” Id. 8 Having considered its powers “to maintain the orderly processes of justice,” the 9 court agrees with the parties’ assessment of the relationship between instant action and the Main 10 Action. Simultaneously considering dispositive motions in both actions, which regard identical 11 patents with “substantially similar” patent claims, would waste judicial resources. Moreover, the 12 timeline and nature of this overall dispute—one which has lasted nearly six years, involves two 13 judicial districts in two states, and multiple actions brought by parties on opposing sides of the 14 first complaint in 2014—calls on the court to use its discretion to help this case progress. The 15 fact that both parties admit a stay is necessary further demonstrates the sound basis for the court 16 granting this request. Collectively, the legal and factual reasons here merit granting this request 17 for a stay. 18 IV. CONCLUSION 19 With good cause appearing, the court GRANTS the parties’ joint request to stay 20 these proceedings pending the dispositive motions regarding the ‘329 Patent in Stiles v. Walmart 21 Stores, Inc. et al., E.D. Cal. Case No. 14-cv-2234-KJM-DMC (“Main Action”). In addition, it is 22 hereby ORDERED the parties’ file an updated joint status report with the Court within 30 days of 23 any decision on the dispositive motions in the Main Action. All other existing deadlines and 24 hearing dates in this action are VACATED until the stay is lifted. 25 IT IS SO ORDERED 26 Dated: April 27, 2020. 27 28