United States District Court, D. Nebraska
ONLINE RESOURCES CORPORATION and ACI WORLDWIDE, INC., Plaintiffs,
JOAO BOCK TRANSACTION SYSTEMS, LLC, Defendant. JOAO BOCK TRANSACTION SYSTEMS, LLC, Plaintiff,
ONLINE RESOURCES CORP., Defendant.
THOMAS D. THALKEN, Magistrate Judge.
This matter is before the court on the Motion to Stay Case Progression Schedule and Enter Summary Judgment Briefing Schedule (Filing No. 25 in Case 8:13CV231 and Filing No. 40 in Case 8:13CV245) filed by Online Resources Corporation (ORCC) and ACI Worldwide, LLC (ACI). The movants filed a brief (Filing No. 26) and an index of evidence (Filing No. 27) in support of the motion. Joao Bock Transaction Systems, LLC (Joao Bock) filed a brief (Filing No. 32) and an index of evidence (Filing No. 33) in opposition to the motion. The movants filed a brief (Filing No. 34) in reply.
The record reflects, these cases arise from a contractual relationship between the parties concerning intellectual property including United States Patent No. 7, 096, 003 (the 003 Patent). In November 2012, ACI and Joao Bock entered into a License, Settlement and Release Agreement concerning the 003 Patent. In March 2013, ACI acquired ORCC which continues to exist as a wholly owned ACI subsidiary. On June 18, 2013, Joao Bock filed suit against ORCC in the United States District Court for the Southern District of New York alleging infringement of the 003 Patent. Joao Bock served ORCC with the lawsuit on June 21, 2013. On July 31, 2013, ORCC requested a pre-motion conference pursuant to local rules with the court by letter. The letter suggested ORCC sought to file a motion to stay or dismiss the action. Also on July 31, 2013, ORCC and ACI filed suit against Joao Bock in the United States District Court for the District of Nebraska alleging breach of the November 2012 Agreement and seeking declaratory judgment of non-infringement and invalidity of the 003 Patent. On the parties' joint request, the Southern District of New York court transferred the New York lawsuit to this district on August 9, 2013.
On November 27, 2013, the court entered an initial progression order setting a specific claim construction and discovery schedule leading to a Markman hearing scheduled for November 13, 2014. See Filing No. 20. Pursuant to the schedule:
a. On or before January 17, 2014, Joao Bock Transaction Systems, LLC (JBTS) shall file and serve a statement of asserted claims and preliminary infringement contentions together with any document production.
b. On or before March 21, 2014, Online Resources Corp. (ORCC) shall file and serve a statement of preliminary invalidity contentions together with any document production.
c. On or before April 28, 2014, the parties shall exchange their proposed terms and claim elements for construction.
No filings were made by the parties on these dates. ORCC and ACI indicate the parties had agreed to an extension of their deadline until April 14, 2014. See Filing No. 25 - Motion p. 3.
On April 11, 2014, ORCC and ACI filed the motion seeking a stay. See Filing No. 25. The movants argue the court should stay proceedings on the patent infringement claims until after resolving the issue of the impact of the License, Settlement and Release Agreement on the alleged infringement. Id. Specifically, the movants ask the court to enter a summary judgment briefing schedule, giving them until fourteen days from the date of this order to file a motion for summary judgment. Id. at 4. The movants suggest that if claim construction is necessary after resolution of the motion for summary judgment, the movants will provide invalidity contentions within thirty days of the order. Id. The movants argue resolution of the issue on summary judgment may obviate the need to expend resources on the patent infringement matters. Id. at 5. The movants note that in their planning report, the parties had contemplated the need for resolution of whether the impact of the License, Settlement and Release Agreement obviates the alleged infringement. Id. at 3; Filing No. 19 p. 4-7. However, the planning report included a proposed claim construction and discovery schedule wherein the movants did not suggest any delay in claim construction or a summary judgment schedule. Id. Attach. 1.
Joao Bock opposes a stay and argues ORCC and ACI merely continue to cause delay. See Filing No. 32 - Response p. 1. Accordingly, Joao Bock contends even if the movants show sufficient justification for the stay, their motives should be examined, and the motion denied. Id. at 4. Joao Bock notes the movants could have filed a motion for summary judgment months ago and do not need the court to enter a schedule for the motion. Id. at 5, 9. Joao Bock argues it continues to suffer substantial prejudice by the movants' continued delay. Id. at 5. By contrast, Joao Bock asserts a stay is unnecessary given the initial progression of the case, lack of court involvement until closer to the Markman hearing date, and low probability of the movants' success on summary judgment. Id. at 6-7.
The power of a district court to stay an action pending on its docket is "incidental to the power inherent in every court to control the disposition of the causes on its docket with economy of time and effort for itself, for counsel, and for litigants." Landis v. North Am. Co., 299 U.S. 248, 254 (1936); see Lockyer v. Mirant Corp., 398 F.3d 1098, 1109 (9th Cir. 2005) ("A district court has discretionary power to stay proceedings in its own court under Landis. "); Capitol Indem. Corp. v. Haverfield, 218 F.3d 872, 874 (8th Cir. 2000). Similarly, it is a "settled proposition that a court has broad discretion and inherent power to stay discovery until preliminary questions that may dispose of the case are determined." Farouki v. Petra Int'l. Banking, Corp., 683 F.Supp.2d 23, 26 (D. D.C. 2010) (citations and quotations omitted). Furthermore, "[d]iscovery is considered inappropriate... while a motion that would be dispositive of the claims... is pending." Geiser v. Simplicity, Inc., No. 5:10-CV-21, 2011 WL 128776, at *4 (D. W.Va. Jan. 14, 2011) (Slip Copy). In determining whether a stay is ...