The opinion
UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF LOUISIANA
PERFORMANCE SOLUTIONS
LLC, 321 HOLDINGS, and HALCYON
BRAND SERVICES INC. CIVIL ACTION
VERSUS 20-797-SDD-RLB
SEA TIES, LLC
RULING
This matter is before the Court on the Motion to Lift Stay and Reopen Proceedings
(“Motion to Lift Stay”)1 filed by Plaintiffs Performance Solutions, L.L.C. (“Performance
Solutions”), 321 Holdings, L.L.C. (“321 Holdings”), and Halcyon Brand Services, Inc.
(“Halcyon”) (collectively, “Plaintiffs”). Defendant Sea Ties, L.L.C. (“Sea Ties”) opposes.2
Plaintiff replied.3
For the following reasons, Plaintiffs' Motion to Lift Stay4 shall be denied.
I. BACKGROUND
This action arises from a patent infringement and business tort dispute over foam
massage roller patents, as summarized by this Court in a prior Ruling.5 Plaintiffs assert
twelve causes of action against Sea Ties.6 Plaintiffs ask the Court to declare that Sea
Ties has infringed on Plaintiffs’ patents; that Plaintiffs have not infringed on Sea Ties’
1 Rec. Doc. 117.
2 Rec. Doc. 118.
3 Rec. Doc. 123.
4 Rec. Doc. 117.
5 Rec. Doc. 59.
6 Rec. Doc. 76 at ¶¶108-195.
patents, and those patents are invalid; and that Sea Ties, either individually or through its
agents, has: violated false advertising and unfair competition laws, tortiously interfered
with Plaintiffs’ contracts and prospective business opportunities, and asserted a bad faith
claim for patent infringement.7
On December 8, 2021, Sea Ties sought a stay pending the earlier of the United
States Patent and Trademark Office (“USPTO”) determining that at least one original
claim in any of the Plaintiffs’ Asserted Patents will survive reexamination, or the Court
deciding the jurisdictional and pleading issues raised in Sea Ties’ Motion to Dismiss.8
This Court entered a stay on February 18, 2022 and administratively closed this action
on the basis that the viability of Plaintiffs’ patent infringement has been strongly called
into question and the potential undue prejudice on Sea Ties having to defend the action
has grown.9 And the Court acknowledged that reexamination may clarify some issues in
the present litigation.10
Plaintiffs now seek to lift the stay and reopen proceedings.11 At the time, Plaintiffs
asserted that the USPTO completed its reexaminations of the Asserted Patents.12
Plaintiffs stated that all 70 original claims in the four Asserted Patents were found valid
and an additional 37 new claims were found valid for 107 total claims.13 Plaintiffs asserted
the reexaminations resulted in appeals filed by Performance Solutions to the USPTO
Patent Trial and Appeal Board (“PTAB”), which reversed the Examiner’s rejections in all
7 Rec. Doc. 76.
8 Rec. Doc. 93.
9 Rec. Doc. 114 at p. 5.
10 Id.
11 Rec. Doc. 117.
12 Id. at p. 1.
13 Id.
four reexaminations.14 Within a week after the USPTO issued a Certificate of
Reexamination for the ‘167 Patent, Sea Ties filed a new petition for its reexamination.15
On April 16, 2024, the USPTO denied Sea Ties’ petition for reexamination of the ‘167
Patent.16 On May 10, 2024, Plaintiffs sought to lift this Court’s stay, asserting there is no
other basis for a continued stay of the proceedings and the disputes remain.17
Sea Ties opposes, asserting Plaintiffs misrepresent that the reexamination of all
four of Plaintiffs’ Asserted Patents were “completed.”18 Specifically, Sea Ties represents
that three new reexaminations were filed prior to Plaintiffs’ filing the instant motion.19
Moreover, Sea Ties asserts that the original reexamination of the fourth Asserted patent
(the ‘112 Patent) was still pending at the time Plaintiffs filed their motion.20 Sea Ties
contends the circumstances have not changed and that the viability of Plaintiffs’ patent
infringement causes of action remain in question and that Sea Ties would be unduly
prejudiced to defend the allegations because the USPTO has not had the opportunity to
consider information material to the patentability of the Asserted Patents.21
Plaintiffs replied with the filing of a Notice of Recent Decision on June 14, 2024 in
the Southern District of New York issuing a preliminary injunction against PowX Inc.
allegedly relating to the same four patents asserted here.22
However, Sea Ties replied with a Notice of Recent Decision, establishing that, on
14 Id.
15 Id. at p. 2.
16 Id.
17 Id.
18 Rec. Doc. 118.
19 Id. at pp. 1-2.
20 Id. at p. 1.
21 Id. at pp. 4-5.
22 Rec. Doc. 126 (citing PowX Inc. v. Performance Solutions, L.L.C., No. 24-CV-01389 (MMG),
2024 WL 3010040 (S.D.N.Y. June 14, 2024)).
August 20, 2024, the USPTO Central Reexamination Unit granted reexamination as to
the ‘112 patent based on a substantial new question of patentability affecting claims 1-23
of the ‘112 patent.23 The USPTO also denied the last of four of Plaintiffs’ Petitions.24 Sea
Ties represents that the USPTO continues to reexamine all claims in all of Plaintiffs’
Asserted Patents, including new claims added during the first set of reexaminations.25
Thus, Sea Ties asserts the circumstances have not changed in this case to warrant
reopening litigation.26
II. LAW AND ANALYSIS
A district court has the inherent power to stay its proceedings. This is best
accomplished by the “exercise of judgment, which must weigh competing interests and
maintain an even balance.”27 In determining whether to stay litigation pending
reexamination of a patent: courts consider: (1) whether a stay will unduly prejudice or
present a clear tactical disadvantage to the nonmoving party, (2) whether a stay will
simplify the issues in question and trial of the case, and (3) the timing of the motion
including whether discovery is complete and whether a trial date has been set.28
As noted in the current stay Order, “ex parte reexamination is a curative
proceeding meant to correct or eliminate erroneously granted patents.”29 The United
States Court of Appeals for the Federal Circuit has provided guidance in this area. In
Fresenius USA, Inc. v. Baxter Intern., Inc., the Federal Circuit held that “the reexamination
23 Rec. Docs. 136, 137, 138, 138-1 at p. 4.
24 Rec. Doc. 136-1.
25 Id. at p. 2.
26 Id.
27 Landis v. N. Am. Co., 299 U.S. 248, 254–55 (1936).
28 KIPB LLC v. Samsung Elecs., No. 2:19-CV-00056-JRG-RSP, 2019 WL 6173365, at *1 (E.D.
Tex. Nov. 20, 2019).
29 Fresenius USA, Inc. v. Baxter Int'l, Inc., 721 F.3d 1330, 1338 (Fed. Cir. 2013).
statute restricts a patentee's ability to enforce the patent's original claims to those claims
that survive reexamination in identical form.”30 Moreover, “[e]ven if the claim is amended
during reexamination to render the claim valid, no suit can be maintained for the period
prior to the validating amendment.”31 “[I]n general, when a claim is cancelled, the patentee
loses any cause of action based on that claim, and any pending litigation in which the
claims are asserted becomes moot.”32 This is the case even if a court or jury has
conclusively decided the validity of the patent so long as a final judgment has not been
entered.33 Fresenius also noted that “the language and legislative history of the
reexamination statute show that Congress expected reexamination to take place
concurrent with litigation, and that cancellation of claims during reexamination would be
binding in concurrent infringement litigation.”34
Here, for the same reasons previously stated by this Court in its prior Ruling,35
maintaining a stay of this action is warranted pending the reexamination proceedings.36
The viability of Plaintiffs’ patent infringement causes of action remain in question, and the
undue prejudice on Sea Ties to defend infringement causes of action on a potentially
invalid patent is substantial.37 It is also likely that the reexamination will eliminate,
simplify, or narrow the issues before the Court.
“Courts have inherent power to manage their dockets and stay proceedings,
30 Id. at 1339.
31 Id.
32 Id. at 1340.
33 Id. at 1344–45.
34 Id. at 1339.
35 Rec. Doc. 114.
36 Id.
37 Notably, the stay also remains in the parallel case in the District of Hawaii, Performance Sols.,
L.L.C. v. Ron Johnson Eng’g, Inc., No. 20-CV-00498-SASP-RT (D. Haw. Apr. 2, 2021), which this
Court previously referenced.
including the authority to order a stay pending conclusion of a PTO reexamination.”38 As
elucidated by the Federal Circuit: “[o]ne purpose of the reexamination procedure is to
eliminate trial of that issue (when the claim is canceled) or to facilitate trial of that issue
by providing the district court with the expert view of the PTO (when a claim survives the
reexamination proceeding).”39 A stay pending final resolution of the reexamination
proceedings would simplify the issues in question and trial and should be maintained until
completion of those proceedings as the factors still militate in favor of a stay.
III. CONCLUSION
For the foregoing reasons, Plaintiffs’ Motion to Lift Stay40 is denied. Upon final
exhaustion of the pending reexamination proceedings, including any appeals, the parties
may move to reopen the case should any claims remain.
IT IS SO ORDERED.
Signed in Baton Rouge, Louisiana on January 15, 2025.
S
SHELLY D. DICK
CHIEF DISTRICT JUDGE
MIDDLE DISTRICT OF LOUISIANA
38 Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1426–27 (Fed. Cir. 1988) (internal citations omitted).
39 Gould v. Control Laser Corp., 705 F.2d 1340, 1342 (Fed.Cir. 1983)
40 Rec. Doc. 117.