Case 1:11-cv-00769-TWP-TAB Document 54

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Filed 09/06/11 Page 1 of 4 PageID #: 460

THE UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF INDIANA INDIANAPOLIS DIVISION

FIREPASS IP HOLDINGS, INC. and FIREPASS CORPORATION, Plaintiffs, v. BOMBARDIER INC., Defendant. Case No. 1:11 CV 0769 TWP-TAB

JOINT MOTION TO STAY LITIGATION PENDING REEXAMINATION OF THE ASSERTED PATENTS Plaintiffs Firepass IP Holdings, Inc. and Firepass Corporation (Plaintiffs) and Defendant Bombardier Inc. (Bombardier), through their respective counsel, respectfully move the Court to stay this litigation until the United States Patent and Trademark Office (PTO) completes its current reexamination of the validity of each of the four patents asserted in this case. In support of their Joint Motion, the parties state as follows: 1. On June 7, 2011, Plaintiffs filed the present Complaint against Bombardier Inc.

and Bombardier Aerospace Corporation1 asserting infringement of U.S. Patent Nos. 6,418,752, 7,207,392, 6,314,754 and RE 40,065 (collectively, the Asserted Patents). 2. Plaintiffs previously asserted the Asserted Patents on October 1, 2009, in a

lawsuit in the Eastern District of New York against Airbus Americas, Inc., Airbus S.A.S., and Parker Hannifin Corporation. See Firepass et al. v. Airbus Americas, Inc. et al., No. 09-CV4234 (the New York Litigation).

Bombardier Aerospace Corporation was dismissed from this lawsuit on August 5, 2001. (See Dkt. Nos. 19, 20.)

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3.

On February 22, 2011, Airbus (one of the defendants in the New York Litigation)

submitted to the PTO requests to reexamine all of the claims Plaintiffs were asserting against the Defendants in that case. By April 29, 2011, the PTO granted all four requests, and is now in the process of reexamining the Asserted Patents. 4. On July 1, 2011, Judge Vitaliano granted the New York Litigation Defendants

motion to stay the New York Litigation based upon the pending reexamination. (Memorandum and Order, Firepass et al. v. Airbus Americas, Inc. et al., No. 09-CV-4234, Docket No. 99 at 2, attached hereto as Exhibit A). 5. [S]tays are often favored in infringement suits involving co-pending

reexamination of the patents-in-suit, and courts routinely exercise their discretion to stay proceedings pending reexamination. Cook v. Endologix, 2010 WL 325960, at *1 (S.D. Ind. 2010) (M.J. Baker).2 6. At this time, the parties agree that a stay of all proceedings and deadlines in this

matter serves the interests of justice because it will conserve the resources of this Court and the parties. Moreover, this case is in its very early stages, as Defendant has not yet even answered the Complaint. WHEREFORE, the parties respectfully request that this Court grant their Joint Motion to Stay Litigation Pending Reexamination of the Asserted Patents and stay all proceedings and deadlines in this matter until the reexaminations are final and complete.

If the Court would like further detail as to the factors courts consider in determining whether to exercise the inherent authority to stay litigation in view of reexamination, the parties are willing to provide such detail.

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Respectfully submitted, September 6, 2011 /s Alexandra Wald (with consent) Adam Arceneaux Alexander D. Forman Nikita S. Williams Ice Miller LLP One American Square Suite 2900 Indianapolis, IN 46282-0200 Phone: 317-236-2100 Fax: 317-236-2219 Of Counsel: Karen Bromberg Alexandra Wald Francisco A. Villegas Damir Cefo Evan Rosenbaum Cohen & Gresser LLP 800 Third Avenue, 21st Floor, New York, NY 10022 Phone: 212-957-7600 Fax: 212-957-4514 Attorneys for Plaintiffs Firepass IP Holdings, Inc. and Firepass Corporation /s David L. Witcoff John C. McNett Woodard, Emhardt, Moriarty, McNett & Henry LLP 111 Monument Circle, Suite 3700 Indianapolis, IN 46204-5137 jmcnett@uspatent.com Phone: 317-634-3456 Fax: 317-637-7561 Of Counsel: David L. Witcoff Brent P. Ray Danielle R. Olivotto JONES DAY 77 W. Wacker Dr. Chicago, Ill. 60601-1692 Phone: 312-782-3939 Fax: 312-782-8585 Attorneys for Defendant Bombardier Inc.

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CERTIFICATE OF SERVICE The undersigned hereby certifies that the foregoing was served electronically via the Courts ECF system and by first class mail on those parties not registered for ECF pursuant to the rules of this Court.

/s David L. Witcoff David L. Witcoff

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Exhibit A

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Case 1:11-cv-00769-TWP-TAB Document 54-1 Filed 09/06/11 Page 3Page PageID #: 466 Case 1:09-cv-04234-ENV -VVP Document 99 Filed 07/06/11 of 5 2 of 4

Case 1:11-cv-00769-TWP-TAB Document 54-1 Filed 09/06/11 Page 4Page PageID #: 467 Case 1:09-cv-04234-ENV -VVP Document 99 Filed 07/06/11 of 5 3 of 4

Case 1:11-cv-00769-TWP-TAB Document 54-1 Filed 09/06/11 Page 5Page PageID #: 468 Case 1:09-cv-04234-ENV -VVP Document 99 Filed 07/06/11 of 5 4 of 4

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IN THE UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF INDIANA INDIANAPOLIS DIVISION FIREPASS IP HOLDINGS, INC. and FIREPASS CORPORATION, Plaintiffs, v. BOMBARDIER INC., Defendant. Case No. 1:11 CV 0769 TWP-TAB

[PROPOSED] ORDER GRANTING JOINT MOTION TO STAY LITIGATION PENDING REEXAMINATION OF THE ASSERTED PATENTS Plaintiffs Firepass IP Holdings, Inc. and Firepass Corporation (Plaintiffs) and Defendant Bombardier Inc. (Bombardier), having jointly moved to stay this litigation pending reexamination of the Asserted Patents, and the Court, being duly advised, hereby GRANTS the Motion. The Court hereby orders this action STAYED until further order, pending the final resolution of PTO reexamination of all four Asserted Patents. SO ORDERED this ______ day of September, 2011.

_________________________________________ Judge, United States District Court Southern District of Indiana, Indianapolis Division

Distribution via the Courts ECF system to all attorneys of record.