motion to stay litigation

8/3/2019 Motion to Stay Litigation

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IN THE UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF INDIANA

INDIANAPOLIS DIVISION

FIREPASS IP HOLDINGS, INC. and

FIREPASS CORPORATION,

Plaintiffs,

v.

BOMBARDIER INC.,

Defendant.

Case No. 1:11 CV 0769 TWP-TAB

JOINT MOTION TO STAY LITIGATION

PENDING REEXAMINATION OF THE ASSERTED PATENTS

Plaintiffs Firepass IP Holdings, Inc. and Firepass Corporation (Plaintiffs) and

Defendant Bombardier Inc. (Bombardier), through their respective counsel, respectfully move

the Court to stay this litigation until the United States Patent and Trademark Office (PTO)

completes its current reexamination of the validity of each of the four patents asserted in this

case. In support of their Joint Motion, the parties state as follows:

1. On June 7, 2011, Plaintiffs filed the present Complaint against Bombardier Inc.

and Bombardier Aerospace Corporation1 asserting infringement of U.S. Patent Nos. 6,418,752,

7,207,392, 6,314,754 and RE 40,065 (collectively, the Asserted Patents).

2. Plaintiffs previously asserted the Asserted Patents on October 1, 2009, in a

lawsuit in the Eastern District of New York against Airbus Americas, Inc., Airbus S.A.S., and

Parker Hannifin Corporation. SeeFirepass et al. v. Airbus Americas, Inc. et al., No. 09-CV-

4234 (the New York Litigation).

1 Bombardier Aerospace Corporation was dismissed from this lawsuit on August 5, 2001. (See Dkt. Nos. 19, 20.)

Case 1:11-cv-00769-TWP-TAB Document 54 Filed 09/06/11 Page 1 of 4 PageID #: 460

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3. On February 22, 2011, Airbus (one of the defendants in the New York Litigation)

submitted to the PTO requests to reexamine all of the claims Plaintiffs were asserting against the

Defendants in that case. By April 29, 2011, the PTO granted all four requests, and is now in the

process of reexamining the Asserted Patents.

4. On July 1, 2011, Judge Vitaliano granted the New York Litigation Defendants

motion to stay the New York Litigation based upon the pending reexamination. (Memorandum

and Order, Firepass et al. v. Airbus Americas, Inc. et al., No. 09-CV-4234, Docket No. 99 at 2,

attached hereto as Exhibit A).

5. [S]tays are often favored in infringement suits involving co-pending

reexamination of the patents-in-suit, and courts routinely exercise their discretion to stay

proceedings pending reexamination. Cook v. Endologix, 2010 WL 325960, at *1 (S.D. Ind.

2010) (M.J. Baker).2

6. At this time, the parties agree that a stay of all proceedings and deadlines in this

matter serves the interests of justice because it will conserve the resources of this Court and the

parties. Moreover, this case is in its very early stages, as Defendant has not yet even answered

the Complaint.

WHEREFORE, the parties respectfully request that this Court grant their Joint Motion to

Stay Litigation Pending Reexamination of the Asserted Patents and stay all proceedings and

deadlines in this matter until the reexaminations are final and complete.

2 If the Court would like further detail as to the factors courts consider in determining whether to exercise the

inherent authority to stay litigation in view of reexamination, the parties are willing to provide such detail.



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Respectfully submitted,

September 6, 2011

/s Alexandra Wald (with consent)Adam Arceneaux

Alexander D. Forman

Nikita S. WilliamsIce Miller LLP

One American SquareSuite 2900

Indianapolis, IN 46282-0200

Phone: 317-236-2100Fax: 317-236-2219

Of Counsel:

Karen BrombergAlexandra Wald

Francisco A. Villegas

Damir CefoEvan Rosenbaum

Cohen & Gresser LLP

800 Third Avenue, 21st Floor,New York, NY 10022

Phone: 212-957-7600

Fax: 212-957-4514

Attorneys for Plaintiffs Firepass IP Holdings,

Inc. and Firepass Corporation

/s David L. Witcoff

John C. McNett

Woodard, Emhardt, Moriarty,

McNett & Henry LLP111 Monument Circle, Suite 3700

Indianapolis, IN [email protected]

Phone: 317-634-3456

Fax: 317-637-7561

Of Counsel:David L. Witcoff

Brent P. RayDanielle R. Olivotto

JONES DAY

77 W. Wacker Dr.Chicago, Ill. 60601-1692

Phone: 312-782-3939

Fax: 312-782-8585

Attorneys for Defendant Bombardier Inc.



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CERTIFICATE OF SERVICE

The undersigned hereby certifies that the foregoing was served electronically via the

Courts ECF system and by first class mail on those parties not registered for ECF pursuant to

the rules of this Court.

/s David L. Witcoff

David L. Witcoff



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Exhibit A

Case 1:11-cv-00769-TWP-TAB Document 54-1 Filed 09/06/11 Page 1 of 5 PageID #: 464


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Case 1:09-cv-04234-ENV -VVP Document 99 Filed 07/06/11 Page 1 of 4Case 1:11-cv-00769-TWP-TAB Document 54-1 Filed 09/06/11 Page 2 of 5 PageID #: 465


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IN THE UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF INDIANA

INDIANAPOLIS DIVISION

FIREPASS IP HOLDINGS, INC. and

FIREPASS CORPORATION,

Plaintiffs,

v.

BOMBARDIER INC.,

Defendant.

Case No. 1:11 CV 0769 TWP-TAB

[PROPOSED] ORDER GRANTING JOINT MOTION TO STAY LITIGATION

PENDING REEXAMINATION OF THE ASSERTED PATENTS

Plaintiffs Firepass IP Holdings, Inc. and Firepass Corporation (Plaintiffs) and

Defendant Bombardier Inc. (Bombardier), having jointly moved to stay this litigation pending

reexamination of the Asserted Patents, and the Court, being duly advised, hereby GRANTS the

Motion.

The Court hereby orders this action STAYED until further order, pending the final

resolution of PTO reexamination of all four Asserted Patents.

SO ORDERED this ______ day of September, 2011.

_________________________________________

Judge, United States District CourtSouthern District of Indiana, Indianapolis Division

Distribution via the Courts ECF system to all attorneys of record.

Case 1:11-cv-00769-TWP-TAB Document 54-2 Filed 09/06/11 Page 1 of 1 PageID #: 469

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