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Victaulic Co. v. Romar Supply, Inc.

United States District Court, N.D. Georgia, Atlanta Division

March 18, 2015

VICTAULIC COMPANY, Plaintiff,
v.
ROMAR SUPPLY, INC., Defendant. VICTAULIC COMPANY, Plaintiff,
v.
EASTERN INDUSTRIAL SUPPLIES, INC., Defendant.

OPINION AND ORDER

WILLIAMS S. DUFFEY, Jr., District Judge.

This matter is before the Court on Defendant Romar Supply, Inc.'s Motion to Dismiss, or, in the alternative, Stay the action in Victaulic Co. v. Romar Supply Inc., 13-cv-03788-WSD ("Victaulic v. Romar") [40], and Defendant Eastern Industrial Supplies, Inc.'s Motion to Dismiss, or, in the alternative, Stay the action in Victaulic Co. v. Eastern Industrial Supplies, Inc., 13-cv-04050-WSD ("Victaulic v. EIS") [52].

I. BACKGROUND

A. Mueller v. Victaulic

Anvil International, LLC ("Anvil") is a New Hampshire company that produces applications used in the construction industry. Anvil is a subsidiary of Mueller Water Products, Inc. ("Mueller"), an Atlanta based company that manufactures and markets products used in the transmission, distribution and measurement of water in North America. Anvil created a rigid pipe coupling known as the SlideLOK, which joins two pipe segments together by forming a water-tight seal at the end of the pipe segments. Plaintiff Victaulic Company ("Victaulic"), based in Pennsylvania, is a competitor of Anvil in the mechanical pipe joining market and owns Patents Nos. 7, 086, 131 ("the '131 Patent") and 7, 712, 796 ("the '796 Patent").

In January 2012, Mueller filed an inter partes reexamination request with the U.S. Patent and Trademark Office ("USPTO") for the '131 and '796 Patents. The USPTO granted the request for reexamination of the '131 Patent and some of the claims of the '796 Patent.

On October 3, 2012, Anvil and Mueller filed a declaratory action against Victaulic in this Court for patent invalidity, seeking a declaration that the '131 and '796 Patents are invalid or, in the alternative, that SlideLOK does not infringe the Patents (1:12-cv-03446, "Mueller v. Victaulic"). On October 19, 2012, Victaulic filed an action against Anvil in the District Court for the Eastern District of Pennsylvania ("EDPA"), and alleged that the SlideLOK coupling infringed on the '131 and '796 Patents.

On September 26, 2013, Judge Carnes issued an Order in Mueller v. Victaulic staying the litigation pending the outcome of the USPTO reexaminations of the '131 and '796 Patents. Judge Carnes administratively terminated the case during the stay, and ordered that any party may reopen the action within 60 days of the USPTO's decision on the pending reexaminations or for good cause shown. The patent infringement action in Mueller v. Victaulic is currently pending before Judge Jones.

On October 7, 2013, the District Court for the EDPA dismissed Victaulic's Complaint without prejudice to avoid the possibility of inconsistent results on the same facts at issue in Mueller v. Victaulic. The District Court for the EDPA allowed Victaulic's claims before it to be preserved as compulsory counterclaims in Mueller v. Victaulic.

On November 14, 2014, Victaulic moved to lift the stay and reopen the case in Mueller v. Victaulic, including because the complaint against Anvil was dismissed in the District Court for the EDPA, and the USPTO had found all claims of the '796 Patent to be valid. On March 16, 2015, Judge Jones denied Victaulic's Motion to lift the stay and reopen the case. Judge Jones found that Victaulic prolonged the inter partes reexamination of the '131 Patent by challenging the USPTO's decision regarding the '131 Patent's reexamination, and by "requesting that the reexaminations continue." Order on the Mot. to Stay in Mueller v. Victaulic, at 9. Judge Jones also found that the USPTO had not reached a final decision regarding the '796 Patent because Plaintiffs had not exhausted their right to appeal the USPTO's decision regarding its validity. Id. at n.1. Based on (1) the pending reexamination proceedings of the Patents that may potentially simplify the issues, (2) the early stage of the litigation, and (3) the absence of undue prejudice to Victaulic, Judge Jones continued the stay in Mueller v. Victaulic and administratively terminated the case.

B. Victaulic v. EIS and Victaulic v. Romar

On July 15, 2013, Victaulic filed a Complaint against Eastern Industrial Supplies Inc. ("EIS") in the District Court for the District of South Carolina. On July 17, 2013, Victaulic filed a Complaint against Romar Supply, Inc. ("Romar") in the District Court for the Northern District of Texas. These are both infringement actions, in which Victaulic alleges that EIS and Romar infringed on the '131 and '796 Patents by selling SlideLOK and inducing third parties to use the allegedly infringing product. EIS and Romar claim that they are merely distributors or resellers of Anvil's product.

On November 14, 2013, the District Court for the Northern District of Texas granted Romar's Motion to Transfer the action to this Court under the first to file rule. On December 6, 2013, the District Court for the District of South Carolina granted EIS's Motion to Transfer to this Court also under the first to file rule.

On December 3, 2013, and January 8, 2014, respectively, EIS and Romar moved to dismiss or, in the alternative, to stay the actions filed by Victaulic under the first to file rule. Dismissal is not appropriate because a court typically declines to exercise jurisdiction over the same claims that involve the same parties in a different forum. See Curtis v. Citibank, 226 F.3d 133, 140 (2d Cir. 2000) (holding that a district court has the authority to dismiss an action if it involves the same parties or their privies and arises out of the same transaction or series of transactions as the first suit); see also Borrero v. United Healthcare of New York, Inc., 610 F.3d 1296, 1306-09 (11th Cir. 2010) (discussing the related doctrine of claim preclusion and its judicial purpose). The issue here is whether the Court ...


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