Case 8:19-cv-01072-PSG-ADS Document 137 Filed 08/27/20 Page 1 of 5 Page ID #:2836
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`Kumar Maheshwari (SBN 245,010)
`Email: kumar@maheshlaw.com
`Mahesh Law Group, P.C.
`7700 Irvine Center Drive, Suite 800
`Irvine, CA 92618
`Tel: 530.400.9246
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`Stephen M. Lobbin (SBN 181,195)
`E-mail: sml@smlavvocati.com
`SML Avvocati P.C.
`888 Prospect Street, Suite 200
`La Jolla, CA 92037
`Tel: 949.636.1391
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`Attorney for Plaintiff Caravan Canopy Int’l, Inc.
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`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`SOUTHERN DIVISION
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`CARAVAN CANOPY INT’L, INC.,
`Plaintiff,
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`v.
`COSTCO WHOLESALE
`CORPORATION, LOWE’S HOME
`CENTER, LLC, Z-SHADE CO. LTD.
`WALMART INC., and
`SHELTERLOGIC CORP.,
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` Defendants.
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`Case No. 8:19-cv-01072-PSG-ADS
` (Lead Case)
`Case No. 5:19-cv-01224-PSG-ADS
`Case No. 2:19-cv-06224-PSG-ADS
`Case No. 2:19-cv-06952-PSG-ADS
`Case No. 2:19-cv-06978-PSG-ADS
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`RESPONSE TO “REQUEST FOR
`CLARIFICATION RE STAY OF
`LITIGATION”
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`Honorable Philip S. Gutierrez
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`Yesterday, without any prior notice, Defendants Lowe’s, Costco and Z-
`Shade have filed a “Request for Clarification re Stay of Litigation,” stating in
`relevant part their request for “clarification that said stay applies to all
`consolidated cases and is not limited to Case No. 19-6978.” See ECF No. 135 at
`1-2. The filing (by experienced counsel) is improper both procedurally and
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`CCI Ex. 2022 – Page 1
`Walmart Inc. v. Caravan Canopy Int'l., Inc.
`IPR2020-01026
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`Case 8:19-cv-01072-PSG-ADS Document 137 Filed 08/27/20 Page 2 of 5 Page ID #:2837
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`substantively, and it appears an attempt to intentionally mislead this Court. As
`such, the Court should deny/strike the request and order sanctions, for the burden
`on the Court and Plaintiff for having to attend to it, including pursuant to L.R.
`11-9 and 83-7, 28 U.S.C. 1927, and/or the Court’s inherent power to sanction
`parties and counsel for frivolous filings.
`Concerning the procedural impropriety, there is no such filing under this
`Court’s Local Rules. This Court entertains Stipulations (under L.R. 7-1),
`Motions (under L.R. 6-1, 7-4 and 7-18), and Ex Parte Applications (under L.R.
`7-19). There is no provision for a “Request,” particularly one without any
`certification under L.R. 7-3 (“Conference of Counsel Prior to Filing of Motions”)
`or any compliance with L.R. 6-1, which mandates:
`L.R. 6-1 Notice and Service of Motion. Unless otherwise provided
`by rule or order of the Court, no oral motions will be recognized and
`every motion shall be presented by written notice of motion. The
`notice of motion shall be filed with the Clerk not later than twenty-
`eight (28) days before . . . the Motion Day designated in the notice.
`Id. (emphasis added). For any of these procedural defects alone, this Court
`should strike the Request.
`Concerning the substance, not only was the original motion to stay (a)
`filed by Defendant Walmart only as movant (see ECF No. 100), (b) not joined by
`any other Defendant, and (c) granted by this Court specifically only as to
`Walmart (see ECF No. 129),1 but Walmart is the sole Petitioner in the IPR
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`1 In relevant part, the Court stated, “Before the Court is Defendant Walmart
`Inc.’s (‘Defendant’) motion to stay the case pending inter partes review. . . . For
`the foregoing reasons, the Court GRANTS Defendant’s motion to stay pending
`the Patent Office’s decision on Defendant’s IPR petition. This order
`administratively closes No. CV 19-6978 PSG (ADSx) [i.e., CCI v. Walmart
`only].” Id. at 1, 6.
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`CCI Ex. 2022 – Page 2
`Walmart Inc. v. Caravan Canopy Int'l., Inc.
`IPR2020-01026
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`Case 8:19-cv-01072-PSG-ADS Document 137 Filed 08/27/20 Page 3 of 5 Page ID #:2838
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`proceeding. See ECF No. 100-3 at 2. The “Request” by these other Defendants
`is an attempt to “bootstrap” themselves into a stay, but only by misleading this
`Court into ignoring the estoppel/preclusive effect of an IPR, and how it impacts
`(and critically differentiates) the stay analysis for these non-Petitioner
`Defendants. As explained succinctly in Evolutionary Intelligence, LLC v. Sprint
`Nextel Corp., No. 13-4513, at *8 (N.D. Cal. Feb. 28, 2014):
`One of the reasons IPR proceedings typically simplify the case is
`that IPR petitioners are subject to statutory estoppel provisions
`preventing them from relitigating invalidity arguments that were
`raised or could have been raised in the IPR. 35 U.S.C. § 315(e)(2).
`Here, because Sprint is not one of the IPR petitioners, Sprint
`would not be precluded under 35 U.S.C. § 315(e)(2) from
`reasserting invalidity contentions rejected by the PTO. To prevent
`Sprint and the IPR petitioners from “tak[ing] multiple bites at the
`invalidity apple,” the court must condition its stay of this case on
`Sprint’s agreement to be bound by some estoppel.
`Evolutionary Intelligence, at *8 (emphasis added) (internal citations omitted); see
`also InVue Sec. Prods. Inc. v. Vanguard Prods. Grp., No. 18-2548, at *5 (M.D.
`Fla. May 12, 2020) (stay conditioned on agreement “not to challenge the
`validity” of the patents involved in the IPR); Milwaukee Elec. Tool Corp. v.
`Snap-On Inc., 271 F. Supp. 3d 990, 1027 (E.D. Wis. 2017) (stay conditioned on
`“Snap-On’s agreement to be bound by the January 2015 IPRs even though it was
`not a co-petitioner”).
`Therefore, not only should Defendants’ “Request” be DOA procedurally,
`but because it provides no proposal, no guidance, and not even a mention of the
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`CCI Ex. 2022 – Page 3
`Walmart Inc. v. Caravan Canopy Int'l., Inc.
`IPR2020-01026
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`Case 8:19-cv-01072-PSG-ADS Document 137 Filed 08/27/20 Page 4 of 5 Page ID #:2839
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`key issue of estoppel and preclusion, it should be judged for what it is—
`intentionally misleading—and sanctioned accordingly.
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`Dated: August 27, 2020
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`Respectfully submitted,
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`SML Avvocati P.C.
`By:
`/s/ Stephen M. Lobbin
`Attorneys for Plaintiff
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`CCI Ex. 2022 – Page 4
`Walmart Inc. v. Caravan Canopy Int'l., Inc.
`IPR2020-01026
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`Case 8:19-cv-01072-PSG-ADS Document 137 Filed 08/27/20 Page 5 of 5 Page ID #:2840
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`CERTIFICATE OF SERVICE
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` hereby certify that on August 27, 2020, I electronically transmitted the
`foregoing document using the CM/ECF system for filing, which will transmit the
`document electronically to all registered participants as identified on the Notice
`of Electronic Filing, and paper copies have been served on those indicated as
`non-registered participants.
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`/s/ Stephen M. Lobbin
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`CCI Ex. 2022 – Page 5
`Walmart Inc. v. Caravan Canopy Int'l., Inc.
`IPR2020-01026
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