The opinion of the court was delivered by: The Honorable David O. Carter, Judge
Julie Barrera Not Present Courtroom Clerk Court Reporter
ATTORNEYS PRESENT FOR PLAINTIFFS: ATTORNEYS PRESENT FOR DEFENDANTS:
NONE PRESENT NONE PRESENT
PROCEEDING (IN CHAMBERS): ORDER DENYING PLAINTIFF'S MOTION TO DISMISS, STAY, BIFURCATE OR SEVER DEFENDANT PACIFIC HANDY CUTTER INC.'S COUNTERCLAIM AND REQUESTING SUPPLEMENTAL BRIEFING
Before the Court is Plaintiff's Amended Motion to Dismiss, Stay, Bifurcate or Sever Defendant Pacific Handy Cutter Inc. ("Defendant" or "PHC")'s Counterclaim (Docket 116 and Docket 158). The Court has considered the moving, opposing, and replying papers and DENIES the Motion but requests supplemental briefing as to how much time is needed for discovery so that Plaintiff can defend itself against the Counterclaim.
This lawsuit arises out of Defendant PHC's alleged infringement of three patents owned by Plaintiff Spellbound Development Group, Inc. ("Plaintiff" or "Spellbound"). The patents concern cutting devices with certain safety features, including blade guards and locking mechanisms for blades that protect against unintended blade displacement. Spellbound represents that it is engaged in the sale of such safety cutters, as well as other safety-related products.
The three patents are U.S. Patent Nos. 7,365,928, 7,726,029, and 6,178,640. Spellbound's initial complaint, filed on August 17, 2009, only alleged infringement of the '928 patent. On October 20, 2009, Spellbound filed a first amended complaint that added allegations of infringement as to the '640 patent, following its purchase of that patent. On June 4, 2010, Spellbound filed a second amended complaint that added allegations that PHC infringed the '029 Patent, which issued on June 1, 2010. The gravamen of Spellbound's infringement claims is that a single product sold by PHC -- the PHC-432 safety knife -- infringes Spellbound's patents. On June 28, 2010, Spellbound moved to file a third amended complaint, which added new defendant Stanley Black & Decker, and, following the Court's granting of that motion, the Third Amended Complaint was deemed filed on September 1, 2010. On September 15, 2010, PHC answered, and added new counterclaims for patent mismarking, patent infringement, and false representation under the Lanham Act related to its Patent No. 7,774,942 (the "'942 Patent").
Spellbound had also moved for a preliminary injunction, whichthe Court denied on September 8, 2010. Spellbound also hoped for an accelerated trial schedule, and on September 28, 2011 requested that the trial be scheduled for mid-January 2011.On October 4, 2010, it also filed the original version of this Motion. On October 19, 2010, the Court set a December 7, 2010 trial date, which Defendants later opposed. There were several other adjustments to the trial date in light of Defendants' objections and the Court beginning a nearly four-month trial. As a result, the discovery cut-off was moved to May 27, 2011 and the trial was moved to August 23, 2011.
The '942 Patent was issued to PHC by the USPTO on August 17, 2010. Following the issuance of the patent, PHC determined that Spellbound infringed the '942 Patent through its XS-CU knife. It therefore added a counterclaim for infringement of this patent in response to Spellbound's Third Amended Complaint. In the present Motion, Spellbound moved to dismiss, stay, sever, or bifurcate that counterclaim as to the '942 patent from this case. The Court allowed the parties to amend their briefings related to this Motion (Docket 157), which the parties did. Accordingly, the Court considers the amended briefings.