IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`KERR MACHINE CO.,
`Plaintiff,
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`v.
`VULCAN INDUSTRIAL
`HOLDINGS, LLC, VULCAN
`ENERGY SERVICES, LLC, and
`CIZION, LLC d/b/a VULCAN
`INDUSTRIAL MANUFACTURING,
`Defendants.
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`CASE NO. 6-20-CV-00200-ADA
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`ORDER DENYING MOTION TO STAY
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`Before the Court is Defendants’ Vulcan Industrial Holdings, LLC, Vulcan Energy
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`Services, LLC, and Cizion, LLC d/b/a Vulcan Industrial Manufacturing’s (collectively “Vulcan”)
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`Motion to Stay. ECF No. 56. Plaintiff Kerr Machine Co Ltd. (“Kerr”) filed a timely Response to
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`the Motions on December 23, 2020. ECF No. 58. The Court has considered the Motion, all relevant
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`filings, and the applicable law. For the reasons set forth below, the Court finds that Defendants’
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`motions should be DENIED.
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`I.
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`BACKGROUND
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`Kerr filed suit against Vulcan alleging patent infringement on March 19, 2020. ECF No.
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`1. On July 31, 2020, Vulcan filed a Motion to Stay Litigation which the Court denied on August
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`2, 2020, listing five reasons for its decision. Those five reasons were: (1) The PTAB has not
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`instituted the Post-Grant-Review (“PGR”), (2) even if the PTAB institutes, the Court anticipates
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`that the trial date will occur before the PGR's final written decision, (3) allowing this case to
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`proceed to completion will provide a more complete resolution of the issues including
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`infringement, all potential grounds of invalidity, and damages, (4) the Court believes in the
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`Seventh Amendment, and (5) Plaintiff opposes the stay.
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`On December 16, 2020, Vulcan filed the present Renewed Motion to Stay citing the
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`PTAB’s institution of the PGR on December 3, 2020. ECF No. 56 at 5. Vulcan asserts that the
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`first reason for denial of its first motion to stay no longer applies, thus a stay should be granted.
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`The PTAB set oral argument in the PGR on September 1, 2021, which is three and a half weeks
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`before the current trial date in the instant case. ECF No. 34 at 10. Vulcan filed this motion to stay
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`the above styled case arguing that the legal factors weigh in favor of staying the case until the
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`PTAB resolves the other claims. Id. at 7–12. Kerr’s response argued the factors weigh against
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`staying this case because staying the case could prejudice Kerr and a final written decision in the
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`PGR could happen after a final judgment is reached in the instant case. ECF No. 58 at 6–7.
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`II.
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`LEGAL STANDARD
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`Whether to stay a case falls within the Court’s inherent discretional authority. In re Ramu
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`Corp., 903 F.2d 312, 318 (5th Cir. 1990) (“The stay of a pending matter is ordinarily within the
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`trial court’s wide discretion to control the course of litigation, which includes authority to control
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`the scope and pace of discovery.”) (citations omitted); see also Clinton v. Jones, 520 U.S. 681, 706
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`(1997). Determining whether to issue a discretionary stay “calls for the exercise of judgment,
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`which must weigh competing interests and maintain an even balance.” Landis v. N. Am. Co.,
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`299 U.S. 248, 255 (1936). Ultimately, the proponent has the burden to “make out a clear case of
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`hardship or inequity in being required to go forward if there is even a fair possibility that the stay
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`for which he prays will work damage to someone else.” In re Davis, 730 F.2d 176, 178 (5th Cir.
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`1984) (quoting Landis, 299 U.S. at 255). “[W]hen granting a stay pending resolution of another
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`case, the court must consider the time expected for resolution of that case. The resultant stay must
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`not be of immoderate or indefinite duration.” Clark v. Southwest Airlines Co., No. 1:16-CV-910-
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`RP, 2017 WL 1435762, at *2 (W.D. Tex. Apr. 21, 2017) (citations omitted). In determining
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`whether a stay is proper, a district court should consider, among other factors, (1) the potential
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`prejudice to the non-moving party; (2) the hardship and inequity to the moving party if the action
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`is not stayed; and (3) judicial resources. Neodron Ltd. v. Dell Techs. Inc., No. 1-19-CV-00819-
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`ADA, 2019 WL 9633629, at *1 (W.D. Tex. Dec. 16, 2019) citing Yeti Coolers, LLC v. Home
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`Depot U.S.A., Inc., No. 1:17-CV-342-RP, 2018 WL 2122868 (W.D. Tex. Jan. 8, 2018).
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`III. ANALYSIS
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`A. Kerr would be unduly prejudiced if the Court granted the Motion to Stay.
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`The Court first considers the potential prejudice to the non-moving party. Vulcan argues
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`Kerr would not be unduly prejudiced if the Court granted the motion to stay. ECF No. 56 at 7–9.
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`Citing RetailMeNot, Inc. v. Honey Sci. LLC, Vulcan references four sub-factors to analyze the
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`prejudice, if any, that Kerr would experience. Id. Those factors are “(1) the timing of the request
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`for review; (2) the timing of the request for a stay; (3) the status of the review proceedings; and
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`(4) the relationship of the parties.” RetailMeNot, Inc. v. Honey Sci. LLC, C.A. No. 18-937-CFC-
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`MPT, 2020 WL 373341, at *6-7 (D. Del. Jan. 23, 2020).
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`Vulcan addressed the factors in sequence stating that 1) Vulcan filed its PGR petition
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`quickly, 2) Vulcan filed its original motion for stay shortly after filing its PGR petition, 3) staying
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`this case would save the parties time and expense, and 4) while Kerr and Vulcan are competitors,
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`Kerr will not suffer erosion of market share during pendency of the PGR. ECF No. 56 at 7-9.
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`Kerr responded by stating that staying the case would only delay the Court’s resolution of
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`this case “for no benefit to anyone other than Vulcan,” Vulcan may bring remaining stock to
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`market during the injunction, any time and expense savings would be illusory unless Vulcan
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`prevailed on all 24 claims at issue in the PGR proceedings, and any progress toward settlement
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`would be hindered by staying on going discovery. ECF No. 58 at 2–3.
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`Though the Court finds the District of Delaware’s decision in RetailMeNot persuasive, it
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`is not controlling. As the Court delineated in its August 2, 2020 text order, the Court believes that
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`allowing this case to proceed to completion will provide a more complete resolution of the issues
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`including infringement, all potential grounds of invalidity, and damages. Further, the Court sees
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`the pursuit of a stay as a delay tactic that would only benefit Vulcan. Thus, the Court finds that
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`Kerr, the non-moving party, would be unduly prejudiced by granting the stay.
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`B. Vulcan would not suffer a clear hardship or inequity should the case proceed.
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`Considering the possibility of harm to Vulcan, Defendants must show a clear hardship or
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`inequity should the case proceed. Davis, 730 F.2d at 178. Vulcan indirectly argues that they would
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`suffer hardship due to incoming “burdensome stages of litigation” and denial of the stay would
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`stifle the PGR’s ability to simplify issues in this lawsuit. ECF No. 56 at 9 and 10.
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`Regarding Vulcan’s mention of the upcoming “burdensome stages of litigation,” Kerr
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`responds by saying that, at the time of their response, they already served extensive written
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`discovery and fact discovery will conclude around in early May of this year. ECF No. 58 at 4. At
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`the time of this Order, the parties are less than a month away from the close of fact discovery so
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`staying the case at this point would not alleviate any of what Kerr refers to as the “burdensome
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`stages of litigation.”
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`The Court recognizes that “[w]hen a claim is cancelled [by the PTAB], the patentee loses
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`any cause of action based on that claim, and any pending litigation in which the claims are asserted
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`becomes moot.” Tinnus Enters. LLC v. Telebrands Corp., No. 6:15-cv-551-RC-JDL, 2017 WL
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`379471, at *2 (E.D. Tex. Jan. 24, 2017). This assumes Vulcan prevails on all of their claims before
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`the PTAB and a final written decision would be issued before a final judgment is entered by this
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`Court. Both of the above are disputable, and, even though the instant litigation might be simplified,
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`Vulcan invited this added complexity by unilaterally seeking parallel litigation in the PTAB. Thus,
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`any hardship Vulcan may experience will be of its own creation. As mentioned above, allowing
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`this case to proceed to completion in this Court will provide a more complete resolution of the
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`issues including infringement, all potential grounds of invalidity, and damages, all without a PGR.
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`C. Judicial economy warrants denying the stay.
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`Vulcan alleged, at the time of its motion, that this case was still in its early stages, thus a
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`stay would preserve the Court’s resources. ECF No. 56 at 9. But, at the time of Vulcan’s motion,
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`the parties were beyond claim construction and had already begun case discovery. Courts regularly
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`measure the early stages of a case by whether the parties have started discovery and whether the
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`court has issued a claim construction order. Cf. Freescale Semiconductor, Inc. v. Amtran Tech.
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`Co., Ltd., A-12-CV-644-LY, 2014 WL 12570609, at *3 (W.D. Tex. Feb. 10, 2014) (“This case is
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`in its early stages; a claim-construction order has not be rendered, discovery has not begun, and a
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`scheduling order has not been rendered.”). Since the claim construction hearing and the issuance
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`of a claim construction Order, the Court has conducted two discovery hearings and is five months
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`away from trial. Though staying the case for resolution by the PTAB would preserve some Court’s
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`resources, this Court has expended considerable time and effort to get this case resolved – to stay
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`the case now would squander those efforts. Thus, judicial economy warrants denying the stay.
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`IV. CONCLUSION
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`Considering the above, the Court concludes that neither the facts of this case nor relevant
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`case law support granting Vulcan’s Motion to Stay. Granting the motion would both work
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`prejudice against Kerr and compromise judicial economy. Further, Vulcan has not demonstrated
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`a clear hardship or inequity in allowing the case to proceed. The Court lastly reiterates the
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`applicable reasons that remain for denying the stay: (1) the Court anticipates that the trial date
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`will occur before the PGR's final written decision, (2) allowing this case to proceed to
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`completion will provide a more complete resolution of the issues including infringement, all
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`potential grounds of invalidity, and damages, (3) the Court believes in the Seventh Amendment,
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`and (4) Plaintiff opposes the stay.
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`Based on the foregoing, Defendant’s Motion to Stay is DENIED.
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`SIGNED this 7th day of April, 2021.
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`ALAN D ALBRIGHT
`UNITED STATES DISTRICT JUDGE
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