Case 2:12-cv-01369-NBF Document 31 Filed 11/28/12 Page 1 of 6
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`UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF PENNSYLVANIA
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`KONINKLIJKE PHILIPS ELECTRONICS N.V.
`and PHILIPS ELECTRONICS NORTH
`AMERICA CORPORATION,
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` Plaintiffs,
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`Judge Nora Barry Fischer
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`C.A. No. 2:12-cv-01369-NBF
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`v.
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`ZOLL LIFECOR CORPORATION,
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` Defendant.
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`Electronically Filed
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`ZOLL’S REPLY TO PHILIPS’ OPPOSITION TO MOTION TO STAY
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`Pursuant to Docket No. 30, ZOLL Lifecor Corporation (“ZOLL”) hereby replies to the
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`opposition (Dkt. 29) of Koninklijke Philips Electronics N.V. and Philips Electronics North
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`America Corporation (collectively, “Philips”) to ZOLL’s motion to stay this case (Dkt. 26).
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`Philips does not dispute that an invalidity finding with regard to any of the asserted
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`claims in the Massachusetts Matter would be binding in this action. Given the large number of
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`overlapping patents asserted both here and in Massachusetts, the potential issue-narrowing
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`consequences on this case in light of the Massachusetts Matter are significant.1 So too are the
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`potential issue-simplifying consequences.2 Four out of six patents asserted here are also asserted
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`1 See e.g., Adventus Americas, Inc. v. Calgon Carbon Corp., 2009 WL 2998094, at *5–*6
`(W.D.N.C. Sept. 15, 2009) (staying action in light of previous action because the first case may
`moot the second case); Gibson Guitar Corp. v. Wal-Mart Stores, Inc., 2008 WL 3472181, at *5–
`*7 (M.D. Tenn. 2008) (“[i]t would be inequitable and inefficient to require Activision (who is
`defending and indemnifying the Retailer Defendants here) to litigate the same issues against the
`same opposing party in two different fora.” Morton Int’l, Inc. v. Atochem N. Am., Inc., 1991 WL
`98609, at *1 (D. Del. Apr. 26, 1991) (staying patent action in light of concurrent action based on
`same patent because first action “may very well preclude further litigation of the instant case.”).
`2 See e.g., Cephalon, Inc. v. Sandoz Inc., 2011 WL 1750446, at *2 (D. Del. May 5, 2011)
`(granting stay due to other co-pending federal action because a “stay will simplify the issues for
`trial.”); Ultra Products, Inc. v. Best Buy Co., Inc., 2009 WL 2843888, at *4–*7 (D.N.J. 2009)
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`Philips Exhibit 2026
`Zoll Lifecor v. Philips
`IPR2013-00618
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`Case 2:12-cv-01369-NBF Document 31 Filed 11/28/12 Page 2 of 6
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`in Massachusetts, and the other two patents share identical specifications and contain many of
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`the same claim terms. Thus resolution of many issues (e.g., prior art invalidity, inequitable
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`conduct, etc.) could impact all of the patents asserted here.
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`These potential consequences are tangible and meaningful, and fully warrant the stay
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`sought by ZOLL. They certainly cannot be trivialized or dismissed as “speculative,” as Philips
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`contends.3 Philips’ principal case on this point, Itex, Inc. v. Mount Vernon Mills, Inc., 2010 WL
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`3655990 (N.D. Ill. Sept. 9, 2010), does not support such a broad proposition. Philips omits that
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`the patent at issue in Itex had previously survived invalidity challenges in reexamination—twice.
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`Moreover, in Itex the defendants in a later-filed action were seeking a stay pending resolution of
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`an earlier-filed action before the same judge, which thus reduced, if not eliminated, the risk of
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`inconsistency and duplication: “because both cases are proceeding before the same district judge,
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`there is not the risk of inconsistent decisions or waste of judicial resources that attends
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`simultaneous litigation conducted in separate fora.” Id. at *3. Moreover, in that case there
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`would have been judicial diseconomies to a stay, since common issues would have to be
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`(“The [First] litigation should clarify and possibly simplify the issues in this current matter”);
`nCube Corp. v. Seachange Intern. Inc., 2010 WL 2266335, at *2–*3 (D. Del. 2010) (staying
`matter in light of pending district court action involving same patents to narrow and simplify the
`issues).
`3 Nor can the authority cited in ZOLL’s moving papers fairly be dismissed as “inapposite”
`because some of it concerns stays in the contexts of reexaminations or ITC actions. Like a
`reexamination, the Massachusetts Matter may moot some, if not most or all, issues in this case.
`Moreover, a stay pending the results of a reexamination usually takes longer than the stay sought
`by ZOLL, so the considerations that bear on stays in that context are if anything more germane in
`this context. So too can a non-binding ITC investigation simplify the issues for a court that stays
`a litigation pending the outcome of such an investigation. Moreover, Philips wrongly contends
`that the stays in Flexsys Americas, LP v. Kumho Tire, U.S.A., Inc., 2005 WL 1126750, at *3
`(N.D. Ohio Apr. 29, 2005) and FormFactor, Inc. v. Micronics Japan Co., Ltd., 2008 WL
`361128, at *2 (N.D. Cal. Feb. 11, 2008) were done pursuant 28 U.S.C. 1659(a). Because Section
`1659(a) addresses only overlapping patents, both these Courts had the option to allow the non-
`overlapping patent counts proceed, but chose to stay them to conserve judicial resources and
`simplify the issues.
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`2
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`Case 2:12-cv-01369-NBF Document 31 Filed 11/28/12 Page 3 of 6
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`addressed separately. See id. (“if the case goes forward, the court will be able to consider
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`simultaneously any common issues that arise.”).4
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`Nor does Philips dispute that it is not entitled to an injunction. That fact distinguishes
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`this case from Philips’ other principal authority, Kahn v. Gen. Motors Corp., 889 F.2d 1078,
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`1079 (Fed. Cir. 1989). As the Federal Circuit recently noted in Spread Spectrum Screening LLC
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`v. Eastman Kodak Co., 657 F.3d 1349, 1358–59 (Fed. Cir. 2011), “Kahn focuses exclusively on
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`cases dealing with injunctive relief,” and “[t]he decision in Kahn is, thus, a narrow one with
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`limited application.” Granting the stay sought by ZOLL poses no threat whatsoever to Philips’
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`business. See id. (emphasizing Kahn’s narrow application due to the fact that “Kahn state[d] that
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`by the time the Illinois action is over his business will be dead”).5
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`With regard to the critical issue of prejudice, Philips fails to confront the central issue of
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`ZOLL’s motion: How can a stay until the “conclusion of the liability phase of the
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`[Massachusetts Matter] that is set to begin in October 13, 2013”—which is now less than a year
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`away, and is hardly “an open-ended” or “indefinite” stay, as Philips repeatedly misstates—
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`unfairly prejudice Philips, when Philips by its own admission sat on the rights it is now asserting
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`4 Nor does St. Clair Intellectual Prop. Consultants, Inc. v. Samsung Electronics Co., Ltd., 2010
`WL 1213367 (D. Del. Mar. 28, 2010) support Philips’ position. The defendants there sought a
`stay pending an appeal of an issue that was not dispositive. Id. at *3 (denying stay because “it is
`not clear that such a ruling would be case-dispositive”). There is no dispute here that the
`Massachusetts Matter could dispose of multiple counts in this action. In ASUSTek Computer Inc.
`v. Ricoh Co., Ltd., 2007 WL 4190689, at *2 (N.D. Cal. Nov. 21, 2007), the patentee sought an
`indefinite stay of an alleged infringer’s declaratory judgment action pending an appeal of the
`patentee’s first action against that same alleged infringer. The court observed that the stay would
`“highly prejudice” the alleged infringer by allowing the “shadow of Ricoh’s threatened patent
`litigation” to remain indefinitely, and so denied the stay. Here, in contrast, there is no “shadow
`of threatened patent litigation” over Philips. Nor is the proposed stay indefinite. See id.
`5 Kahn is further distinguishable in that the two pending actions there did not involve
`overlapping patent claims. 889 F.2d at 1081. Nor did the Kahn patentee bring both actions. See
`id. Here, Philips brought three actions, and asserts six overlapping patents in both this case and
`the Massachusetts Matter.
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`3
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`Case 2:12-cv-01369-NBF Document 31 Filed 11/28/12 Page 4 of 6
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`in this case for at least four years? The accused LifeVest product has been on the market for
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`eleven years. Philips sent ZOLL a letter in 2008 that Philips now says put ZOLL on notice of its
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`contention that the LifeVest product infringes the patents asserted in this case. Philips’
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`opposition does not address any of this important history, and its bearing on the relief ZOLL
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`seeks. In order to buy Philips’ prejudice argument the Court would have to accept that ZOLL’s
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`marketing and sales of the accused LifeVest product over the last eleven years were of no
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`consequence to Philips, and yet somehow ZOLL’s continuation of those activities for another
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`year—with the asserted patents fast approaching expiration—would visit dire prejudice upon
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`Philips.
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`None of this makes sense. Just as important, none of Philips’ excuses are substantiated
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`by anything in the record. Philips says that “[a] recent surge in advertising and sales of the
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`LifeVest product (a wearable defibrillator requiring no bystander assistance) led Philips to file
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`this suit at this time.” (Dkt. 29, at 3.) Where is the evidence of this “recent surge?” Philips
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`points to none (and in fact, ZOLL has not even released any LifeVest sales information in over
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`ten months). Philips further characterizes the LifeVest as a “competing product in the
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`marketplace,” even suggesting that it and ZOLL are “direct competitors” with regard to this
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`product. (Id. at 7.) That is news to ZOLL. Where is the evidence that Philips sells “a wearable
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`defibrillator requiring no bystander assistance?” Philips points to nothing on this issue, either,
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`because no such device exists. Nor are its actions consistent with those of a “direct competitor,”
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`filing suit against ZOLL in 2010 against some defibrillator products (and then again in 2012 in a
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`different forum against some of those same products) while knowing full well that ZOLL was
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`also selling the LifeVest. An objective assessment of the facts here if anything compels the
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`conclusion that Philips either did not care about the LifeVest, or never thought it infringed.
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`Case 2:12-cv-01369-NBF Document 31 Filed 11/28/12 Page 5 of 6
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`Thus, for the foregoing reasons and those stated in ZOLL’s moving papers, ZOLL
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`respectfully requests that this case be stayed.
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`Dated: November 28, 2012
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`Respectfully submitted,
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`/s/ Henry M. Sneath
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`Henry M. Sneath (Pa. ID No. 40559)
`Robert L. Wagner (Pa. ID No. 308499)
`Joseph R. Carnicella (Pa. ID No. 200294)
`Picadio Sneath Miller & Norton, P.C.
`Four Gateway Center
`444 Liberty Avenue, Suite 1105
`Pittsburgh, PA 15222
`(412) 288-4000
`(412) 288-2405 (fax)
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`Case 2:12-cv-01369-NBF Document 31 Filed 11/28/12 Page 6 of 6
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`CERTIFICATE OF SERVICE
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`I hereby certify that this document filed through the ECF system will be sent
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`electronically to the following registered participants as identified on the Notice of Electronic
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`Filing (NEF) on this 28th day of November, 2012.
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`Dara A. DeCourcy
`George N. Stewart
`Zimmer Kunz
`600 Grant Street
`3300 USX Tower
`Pittsburgh, PA 15219
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`David K. Mroz
`Michael Jakes
`Robert F. Shaffer
`Finnegan, Henderson Farabow, Garrett & Dunner, LLP
`901 New York Avenue, NW
`Washington, DC 20001
`
`Denise W. DeFranco
`Finnegan, Henderson Farabow, Garrett & Dunner, LLP
`Two Seaport Lane
`Sixth Floor
`Boston, MA 02210-2001
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`/s/ Henry M. Sneath
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`Henry M. Sneath, Esquire
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`Page 6 of 6
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