Hunt Pennington Kumar & Dula PLLC

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Cases7
Challenger50%
Patent Owner50%
NPE50%
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Mech Eng, ManufSemicond., OpticCommunications
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Entered
Case
Description
08/11/23
NOTICE of Appearance by Brian Joshua Paul on behalf of Parcus Medical, LLC (Paul, Brian) (Entered: 08/11/2023)
08/23/22
Notice of Filing of Official Electronic Transcript of Status Conference (116) and Opposed Motion to De-Designate Certain Materials (117) Proceedings held on 08/16/2022 before Judge Hal R. Ray, Jr.. Court Reporter/Transcriber Kathy Rehling, kathyrehlingtranscripts@gmail.com, Telephone number 972-786-3063. Parties are notified of their duty to review the transcript. A copy may be purchased from the court reporter or viewed at the clerk's office. If the transcript contains personal identifiers that must be redacted under MO 61, Fed.R.Civ.P. 5.2 or Fed.R.Crim.P. 49.1, or if the transcript contains the name of a minor child victim or a minor child witness that must be redacted under 18 U.S.C. § 3509, file a Redaction Request - Transcript within 21 days. If no action is taken, the entire transcript will be made available through PACER without redaction after 90 calendar days. The clerk will mail a copy of this notice to parties not electronically noticed. (32 pages). Redaction Request due 9/13/2022. Redacted Transcript Deadline set for 9/23/2022. Release of Transcript Restriction set for 11/21/2022. (Rehling, Kathy) (Entered: 08/23/2022)
08/23/22
Notice of Filing of Official Electronic Transcript of Status Conference (116) and Opposed Motion to De-Designate Certain Materials (117) Proceedings held on 08/16/2022 before Judge Hal R. Ray, Jr.. Court Reporter/Transcriber Kathy Rehling, kathyrehlingtranscripts@gmail.com, Telephone number 972-786-3063. Parties are notified of their duty to review the transcript. A copy may be purchased from the court reporter or viewed at the clerk's office. If the transcript contains personal identifiers that must be redacted under MO 61, Fed.R.Civ.P. 5.2 or Fed.R.Crim.P. 49.1, or if the transcript contains the name of a minor child victim or a minor child witness that must be redacted under 18 U.S.C. § 3509, file a Redaction Request - Transcript within 21 days. If no action is taken, the entire transcript will be made available through PACER without redaction after 90 calendar days. The clerk will mail a copy of this notice to parties not electronically noticed. (32 pages). Redaction Request due 9/13/2022. Redacted Transcript Deadline set for 9/23/2022. Release of Transcript Restriction set for 11/21/2022. (Rehling, Kathy) (Entered: 08/23/2022)
Case Stayed (lih)
06/10/22
ORAL ORDER: Having reviewed Defendant's letter motion to stay the case pending issuance of the PTAB's final written decision in the IPR proceedings, (D.I. [72] ), and Defendant's letter motion for leave to file an amended and supplemental answer adding six affirmative defenses, (D.I. [69] ), and having considered Plaintiff's responsive letter submissions (D.I. 71. D.I. 75), IT IS HEREBY ORDERED that: (1) Defendant's motion to stay is GRANTED because Defendant has satisfied the three stay factors. See IOENGINE, LLC v. PayPal Holdings Inc. , C.A. No. 18-452-WCB et al., 2019 WL 3943058, at *2 (D. Del. Aug. 21, 2019). First, the stay will simplify the issues for trial because the PTAB's final written decision is likely to resolve prior art-based invalidity arguments on one of the two patents-in-suit. Plaintiff's position that the issues will not be simplified because the remaining patent-in-suit is not subject to IPR proceedings has been frequently rejected by courts. See id. at *8-10 (citing cases). See also SITO Mobile R&D IP, LLC v. World Wrestling Entmt Inc. , C.A. No. 21-721-CFC, 2021 WL 7628181, at *1 (D. Del. Dec. 20, 2021) (granting stay where only seven of twelve patents-in-suit were before the PTAB). Tellingly, Plaintiff has not provided any case authority supporting its position on this issue. Moreover, Plaintiff has represented on the record that the patent-in-suit which is not before the PTAB "rises and falls" with the patent-in-suit subject to the IPR proceedings. (D.I. 72, Ex. C at 38:6-9) Second, a stay will keep this case on track with related Civil Action No. 20-1339-MN, which was subject to the same scheduling order applicable to this case and was recently stayed pending resolution of the IPR proceedings. (D.I. 46. C.A. No. 20-1339-MN, D.I. 114) Plaintiff emphasizes the approaching claim construction deadlines, but going forward with claim construction on patent claims that could be invalidated in the IPR proceedings would be a waste of party and court resources. (D.I. 75 at 1) Third, Plaintiff will not suffer undue prejudice from the delay, and Defendant will not gain a clear tactical advantage as a result of the stay. Plaintiff refers broadly to its interest in the prompt enforcement of its patent rights. (D.I. 75 at 4) However, Plaintiff's position in opposition to a stay in the instant case is at odds with its position in the two other cases in which it has asserted claims based on the patent subject to the IPR. The record shows that Plaintiff agreed to stay related Civil Action No. 20-1339-MN and affirmatively moved to stay an action involving the patent-in-suit pending in the Western District of Texas. (D.I. 72, Ex. D. C.A. No. 20-1339-MN, D.I. 113) (2) Defendant's motion for leave to file an amended and supplemental answer is DENIED without prejudice to renew once the stay is lifted. Within seven days of the PTAB's issuance of its final written decision in the IPR proceedings, the parties shall provide a joint status letter to the Court. IT IS FURTHER ORDERED that the discovery dispute teleconference scheduled for June 15, 2022 at 2:00 p.m. is CANCELLED. Ordered by Judge Sherry R. Fallon on 6/10/2022. (lih)
10/07/20
ORDER granting 13 Motion to Remand to State Court. Case is remanded to the 7th Judicial Circuit in Volusia County. Clerk is directed to mail a certified copy of the order to the Circuit court and thereafter close the case. Signed by Judge Anne C. Conway on 10/7/2020. (copies mailed/emailed) (AKC) (Entered: 10/07/2020)