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District Court Orders Transfer of Case During Claim Construction Briefing: Did the Transfer Stay the Briefing Deadlines?

Defendants LG Electronics Inc. and LG Electronics U.S.A., Inc. (collectively, “LG”) filed a motion to clarify the district court’s order transferring the case to the district of New Jersey, seeking a ruling that the court’s deadlines were suspended in view of the transfer order. The district court had granted LG’s motion to transfer on ยง 1404(a) convenience grounds.

Prior to the transfer order, the district court had entered a scheduling order that set a number of deadlines through trial, including a deadline for LG’s Responsive Claim Construction brief. LG’s motion asked the court to find that the transfer order suspended all pending deadlines.

The district court disagreed and found that “neither language effectuating a stay in the Transfer Order nor good cause to show that the Court originally intended to include such language.” The district court also noted “that LG’s assumption of inherency runs counter to the Court’s standard practice of staying cases through an explicit order. The Court observes that in every case cited by LG, the Court either ruled on a subsequent motion requesting a stay or expressly included language in its orders effectuating a stay. The Court finds no order cited by LG that stands for the proposition that LG implies here: that absent explicit language a stay should be implied by default. That the Court does not stay cases pending convenience transfer by default is not to say that the Court does not believe that timely requests for such stays are never circumstantially warranted.”

The district court then must some additional observations: “despite the urgency of the pending deadline and the seriousness of missing such a deadline, LG did not seek (and has not sought) an expedited ruling from the Court, such as by promptly filing an emergency motion asking for a hearing, which this Court’s rules provide for and which might have allowed the Court to resolve this issue days ago. Instead, LG appears to have decided to, in effect, file a motion on the eve of a Court ordered deadline asking the Court to find that its long pending deadline does not exist. As discussed above, LG’s actions are all the more confusing to the Court as nothing in the cases cited by LG (and those the Court is aware of that LG did not cite) provides a reason why LG would proceed on such a course.”

The district court then confirmed that “all current deadlines in this case remain in effect until such time that this case is received by the transferee court in the District of New Jersey, and at that point, all pending deadlines–except those for hearings and trial–will remain in effect until that court enters an order altering such deadlines. All matters due to be filed should be filed with this Court until the transferee court communicates its receipt of this case to the parties and provides the parties with a new case number such that filing may be made with the transferee court.”

The district court also granted one additional day for LG to file its responsive claim construction brief, but said that it would not give additional time. “The Court hereby grants LG a one day extension, until June 11, 2015, on its Responsive Claim Construction brief to account for the time LG’s motion was pending. For the avoidance of doubt, future parties should not expect such extensions while their motions are pending. The Court notes that LG did not file its Motion for Clarification as an emergency motion nor did LG seek an expedited response and ruling. The Court is forced to conclude that LG’s purpose in its filing, at least in part, is additional delay. Had LG wanted immediate guidance and not additional delay, then the Motion addressed herein should clearly have promptly sought emergency/expedited treatment–something LG knowingly chose not to do. Consequently, this Court sees no need to grant a greater extension than the one noted above.”

Mondis Technology LTD., v. LG Electronics, Inc., et al., Case No. 2:14-CV-702-JRG (E.D. Tex. June 2015)

The authors of are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Stan Gibson at 310.201.3548 or