Case 6:16-cv-01087-RBD-GJK Document 45 Filed 05/09/17 Page 1 of 8 PageID 173
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`UNITED STATES DISTRICT COURT
`MIDDLE DISTRICT OF FLORIDA
`ORLANDO DIVISION
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`LIGHTING SCIENCE GROUP
`CORPORATION,
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`Plaintiff/Counter-Defendant,
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` Case No. 6:16-cv-413-Orl-37GJK
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` Case No. 6:16-cv-1087-Orl-37GJK
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` Case No. 6:16-cv-1255-Orl-37GJK
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`NICOR, INC.,
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`LIGHTING SCIENCE GROUP
`CORPORATION,
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`v.
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`Defendant/Counter-Claimant.
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`Plaintiff/Counter-Defendant,
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`v.
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`Defendant/Counter-Claimant.
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`AMERICAN DE ROSA LAMPARTS,
`LLC,
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`LIGHTING SCIENCE GROUP
`CORPORATION,
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`v.
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`Plaintiff,
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`TECHNICAL CONSUMER
`PRODUCTS, INC.,
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`Defendant.
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`Case 6:16-cv-01087-RBD-GJK Document 45 Filed 05/09/17 Page 2 of 8 PageID 174
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`Plaintiff/Counter-Defendant,
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`LIGHTING SCIENCE GROUP
`CORPORATION,
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`v.
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`Defendant/Counter-Claimant.
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`Plaintiff,
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` Case No. 6:16-cv-1256-Orl-37GJK
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` Case No. 6:16-cv-1321-Orl-37GJK
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`SATCO PRODUCTS, INC.,
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`LIGHTING SCIENCE GROUP
`CORPORATION,
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`v.
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`AMAX LIGHTING,
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`Defendant.
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`ORDER
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`The five patent infringement actions identified above (“Related Actions”)—each
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`initiated seriatim by Plaintiff Lighting Science Group Corporation (“Lighting
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`Science”)—are before the Court upon consideration of the following identical documents
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`filed in each Related Action: (1) Defendants’ Motions to Stay Litigation Pending Inter
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`Partes Review and Incorporated Memorandum in Support (“Stay Motions”), filed
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`February 27, 2017;1 (2) Plaintiff’s Memoranda in Opposition to Defendants’ Motions to
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`1 (Lighting Sci. v. Nicor, Inc., No. 6:16-cv-413-Orl-37GJK (“Nicor Action”), at
`Doc. 86; Lighting Sci. v. Am. De Rosa Lamparts, LLC, No. 6:16-cv-1087-Orl-37GJK (“ADRL
`Action”), at Doc. 36; Lighting Sci. v. Tech. Consumer Prods., Inc., No. 6:16-cv-1255-Orl-
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`Case 6:16-cv-01087-RBD-GJK Document 45 Filed 05/09/17 Page 3 of 8 PageID 175
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`Stay Litigation (“Responses”), filed March 10, 2017;2 (3) Defendants’ Replies in Support
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`of Motion to Stay Litigation Pending Inter Partes Review and Incorporated Memoranda
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`in Support (“Replies”), filed March 27, 2017; 3 and (4) Plaintiff’s Surreplies in Support of
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`Opposition to Motion to Stay Litigation Pending Inter Partes Review and Incorporated
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`Memorandum of Law in Opposition (“Surreplies”), filed May 1, 2017.4
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`I.
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`BACKGROUND
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`In these Related Actions, Lighting Science claims that its competitors in the LED
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`lighting market—Nicor, Inc. (“Nicor”), American De Rosa Lamparts, LLC (“ADRL”),
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`Technical Consumer Products, Inc. (“TCPI”), Satco Products, Inc. (“Satco”), and Amax
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`Lighting (“Amax”)—are infringing certain claims (“Asserted Claims”) of three of
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`Plaintiff’s
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`registered
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`patents
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`(“Patents-in-Suit”)—U.S. Patent No. 8,201,968
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`(“‘968 Patent”), U.S. Patent No. 8,672,518 (“‘518 Patent”), and U.S. Patent No. 8,967,844
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`(“‘844 Patent”).5
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`37GJK (“TCPI Action”), at Doc. 49; Lighting Sci. v. Satco Prods., Inc., No. 6:16-cv-1256-
`Orl-37GJK (“Satco Action”), at Doc. 44; Lighting Sci. v. Amax Lighting, No. 6:16-cv-1321-
`Orl-37GJK (“Amax Action”), at Doc. 49.)
`2(Nicor Action, at Doc. 87; ADRL Action, at Doc. 37; TCPI Action, at Doc. 51, Satco
`Action, at Doc. 45; Amax Action, at Doc. 48.)
`3(Nicor Action, at Doc. 91; ADRL Action, at Doc. 39; TCPI Action, at Doc. 55, Satco
`Action, at Doc. 48; Amax Action, at Doc. 52.)
`4(Nicor Action, at Doc. 97; ADRL Action, at Doc. 44; TCPI Action, at Doc. 61, Satco
`Action, at Doc. 52; Amax Action, at Doc. 57.)
`5(Nicor Action, at Doc. 45 (Amended Complaint); ADRL Action, at Doc. 1
`(Complaint); TCPI Action, at Doc. 29 (Amended Complaint), Satco Action, at Doc. 11
`(Amended Complaint); Amax Action, at Doc. 37 (Amended Complaint).)
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`Case 6:16-cv-01087-RBD-GJK Document 45 Filed 05/09/17 Page 4 of 8 PageID 176
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`By asserting counterclaims and affirmative defenses in these actions,6 and by filing
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`petitions with the Patent Trial and Appeal Board (“PTAB”) on April 17, 2017
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`(“Petitions”), for inter partes review (“IPR”) in accordance with new procedures set forth
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`in the Leahy-Smith America Invents Act (“AIA”), 35 U.S.C. §§ 311–319, each of the
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`Defendants have challenged the validity of the Asserted Claims.7 Based on their Petitions,
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`and the fact that the PTAB previously instituted IPRs with respect to claims of the ‘968
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`and ‘844 Patents,8 the Defendants request that the Court stay these proceedings pending
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`further action by the PTAB. (See supra nn.1, 3.) Lighting Science opposes the Stay Motions
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`(see supra nn.2, 4), and the matter is ripe for adjudication.
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`II.
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`DISCUSSION
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`Under the AIA, IPR presents “a new system for reviewing issued patents,
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`providing for stays of district court proceedings, and estoppels in tribunals, based on”
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`expedited decisions of the Patent and Trademark Office (“PTO”).9 See SAD Inst., Inc. v.
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`6(See Nicor Action, at Doc. 48; ADRL Action, at Doc. 21; TCPI Action, at Doc. 36,
`Satco Action, at Doc. 22, pp. 14–16; Amax Action, at Doc. 39.)
`7(See Nicor Action, Doc. 93; TCPI Action, Doc. 57; Amax Action, Doc. 54.)
`8Based on petitions filed by prior Defendants in another Related Case—Lighting
`Science v. Sea Gull Lighting Products, LLC, No. 6:16-cv-338-Orl-37GJK (“SGLP Action”)—
`on February 6, 2017, the PTAB instituted IPRs with respect to claims of the ‘968 and ‘844
`Patents (“SGLP IPRs”). (See Dismissed SGLP Action, Doc. 56.) After the Court dismissed
`the SGLP Action on March 8, 2017, in accordance with the parties’ settlement, the SGLP
`IPRs were also dismissed.
`9The new adjudicative IPR process is intended to improve the non-adjudicative
`post-issue examination process by: (1) “reducing to 12 months the time the PTO spends
`reviewing validity, from the previous reexamination average of 36.2 months”; and
`(2) “minimizing duplicative efforts by increasing coordination between district court
`litigation” and the IPR processes. See Andersons, Inc. v. Enviro Granulation, LLC,
`No. 8:13-cv-3004-T-33MAP, 2014 WL 4059886, at *1 (M.D. Fla. 2014) (granting motion to
`stay).
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`Case 6:16-cv-01087-RBD-GJK Document 45 Filed 05/09/17 Page 5 of 8 PageID 177
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`ComplementSoft, LLC, 825 F.3d 1341, 1353–54 (Fed. Cir. 2016) (Newman, J., concurring in
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`part & dissenting in part). In the two-stage IPR proceeding:
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`(1)
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`(2)
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`the PTAB first reviews the IPR petition and any
`preliminary response, and makes its decision—which
`is not subject to appeal—whether “there is a reasonable
`likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the
`petition” based on prior art (see Synopsys, Inc. v. Mentor
`Graphics Corp., 814 F.3d 1309, 1314 (Fed. Cir. 2016)
`(quoting 35 U.S.C. § 314(a))); and
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`the PTAB then conducts the IPR and—based on a
`fulsome administrative record—issues a final written
`decision with respect to “any patent claim challenged
`by the petitioner” (see id. (quoting 35 U.S.C. § 318(a)).
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`When IPRs are sought, the decision to stay related civil patent infringement
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`litigation is within the sound discretion of the district court. See Auto. Mfg. Sys., Inc. v.
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`Primera Tech., Inc., No. 6:12-cv-1727-Orl-37DAB, 2012 WL 6133763, at *1 (M.D. Fla.
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`Nov. 21, 2013). Non-exclusive factors pertinent to the exercise of such discretion include:
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`(1) the procedural posture of the litigation, including whether discovery is complete and
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`a trial date is set (“Procedural Posture Factor”); (2) whether the stay will simplify issues
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`in the dispute between the litigants (“Simplification Factor”); and (3) whether the stay
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`will unduly prejudice or present a clear tactical disadvantage to the nonmoving party
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`(“Prejudice Factor”). See id.10
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`10 See also Rothschild Storage Retrieval Innovations, LLC v. Motorola Mobility, LLC,
`Case No. 14-22659-CIV-Scola, 2015 WL 12715618, at *1 (S.D. Fla. May 11, 2015) (granting
`stay); CANVS Corp. v. Nivisys, No. 2:14-cv-99-FtM-38DNF, LLC, 2014 WL 6883123, at *2
`(M.D. Fla. Dec. 5, 2014) (granting stay).
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`Case 6:16-cv-01087-RBD-GJK Document 45 Filed 05/09/17 Page 6 of 8 PageID 178
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`Here, the totality of the circumstances weigh in favor of entering a stay. First, the
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`procedural posture of the Related Actions is not advanced. The oldest Related Action was
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`filed on March 10, 2016 (see Nicor Action, at Doc. 1), the newest was filed on July 22, 2016
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`(see Amax Action, at Doc. 1), and—due the amendment of pleadings, an initial lack of
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`diligence,11 various requests for extensions of time, and the necessity of consolidating the
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`Related Actions to conserve resources—discovery is far from complete, the Court has not
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`conducted a claim construction hearing, the claim construction issues are not fully
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`briefed, and the trial dates are not yet set.12 Thus, the Procedural Posture Factor weighs
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`in favor of entering a stay.
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`Given the pending invalidity counterclaims and affirmative defenses (see supra
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`note 6), there is little doubt that input from the PTO will facilitate the resolution of these
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`proceedings. Hence the Simplification Factor also weighs strongly in favor of entering a
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`stay. See Primera Tech., 2013 WL 6133763, at *4 (noting the varied benefits that may result
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`from IPRs even when no claims are invalidated).
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`Finally, the Prejudice Factor weighs somewhat against entry of a stay, but it is not
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`determinative here because Lighting Science’s litigation choices do not demonstrate any
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`particular sense of urgency. See Andersons, 2014 WL 4059886, at *3 (rejecting argument
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`that stay was inappropriate because the parties were competitors); see also VirtualAgility
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`Inc. v. Salesforce.com, Inc., 759 F.3d 1307, 1318–19 (Fed. Cir. 2014) (reversing denial of stay
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`11(Nicor Action, at Doc. 87; ADRL Action, at Doc. 37; TCPI Action, at Doc. 51, Satco
`Action, at Doc. 45; Amax Action, at Doc. 48.)
`12(See e.g., Nicor Action, at Docs. 81, 83, 84.)
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`Case 6:16-cv-01087-RBD-GJK Document 45 Filed 05/09/17 Page 7 of 8 PageID 179
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`where district court gave undue weight to parties’ status as competitors). Further, the
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`new expedited procedures provided under the AIA should ameliorate any risk of
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`prejudice. See Primera Tech., 2013 WL 6133763, at *3.
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`III. CONCLUSION
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`Accordingly, it is ORDERED AND ADJUDGED that:
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`(1)
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`Defendant Nicor, Inc.’s Motion to Stay Litigation Pending Inter Partes
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`Review and Incorporated Memorandum in Support filed in the Nicor
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`Action (Doc. 86) is GRANTED.
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`(2)
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`Defendant American De Rosa Lamparts, Inc.’s Motion to Stay Litigation
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`Pending Inter Partes Review and Incorporated Memorandum in Support
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`filed in the ADRL Action (Doc. 36) is GRANTED.
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`(3)
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`Defendant Technical Consumer Products, Inc.’s Motion to Stay Litigation
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`Pending Inter Partes Review and Incorporated Memorandum in Support
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`filed in the TCPI Action (Doc. 49) is GRANTED.
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`(4)
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`Defendant Satco Products, Inc.’s Motion to Stay Litigation Pending Inter
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`Partes Review and Incorporated Memorandum in Support filed in the Satco
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`Action (Doc. 44) is GRANTED.
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`(5)
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`Defendant Amax Lighting’s Motion to Stay Litigation Pending Inter Partes
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`Review and Incorporated Memorandum in Support filed in the AMAX
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`Action (Doc. 47) is GRANTED.
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`(6)
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`The Related Actions are hereby STAYED pending resolution of the
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`Petitions for Inter Partes Review referenced above.
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`Case 6:16-cv-01087-RBD-GJK Document 45 Filed 05/09/17 Page 8 of 8 PageID 180
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`(7)
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`The Clerk is DIRECTED to vacate all existing deadlines and TERMINATE
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`all pending motions.
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`(8) On or before Friday, June 23, 2017, and every 45 days thereafter, the parties
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`to the Related Actions are DIRECTED to provide written notice to the
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`Court concerning: (a) the status of the Inter Partes Proceedings; (2) any
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`settlement discussions in any Related Case; and (3) whether assistance from
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`this Court is desired to facilitate settlement discussions.
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`DONE AND ORDERED in Orlando, Florida, this 9th day of May, 2017.
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`Copies to:
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`Counsel of Record
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