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Automated Merchandising Systems, Inc. v. Rea

United States District Court, E.D. Virginia, Alexandria Division

August 6, 2014

AUTOMATED MERCHANDISING SYSTEMS, INC., Plaintiff,
v.
TERESA STANEK REA, Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the United States Patent and Trademark Office, et al., Defendants

For Automated Merchandising Systems, Inc., a Delaware Corporation, Plaintiff: James Daniel Berquist, LEAD ATTORNEY, Donald Lee Jackson, Davidson Berquist Jackson & Gowdey LLP, Arlington, VA.

For Teresa Stanek Rea, in her official capacity as the Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the United States Patent and Trademark Office, United States Patent and Trademark Office, Defendants: David Moskowitz, Kimere Jane Kimball, LEAD ATTORNEYS, U.S. Attorney's Office (Alexandria-NA), Alexandria, VA.

Page 527

ORDER

Anthony J. Trenga, United States District Judge.

In this action, plaintiff Automated Merchandizing Systems, Inc. (" AMS" ) seeks an order compelling the defendants[1] to terminate four inter partes reexaminations currently pending before the USPTO based on a consent judgment entered in a federal court patent infringement action that involved the same patents[2] as those under reexamination. The USPTO opposes that request on the grounds that the relied-upon federal court action did not actually adjudicate the validity of the patents at issue in the reexamination proceedings and therefore does not require the termination of its reexamination proceedings under the applicable statute. The parties have filed cross motions for summary judgment [Doc. Nos. 31 and 35]. For the reasons below, plaintiff's motion for summary judgment will be DENIED and defendants' motion for summary judgment will be GRANTED.

Background

This case has a complicated procedural history, briefly summarized as follows:

On December 29, 2003, AMS filed a patent infringement action against Crane Corporation (" Crane" ) in the U.S. District Court for the Northern District of West Virginia, Civil Action 3:03-cv-88 (" the West Virginia Action" ). That action initially involved the '402 patent, but on September 1, 2004, the '634 patent was issued; and that same day, AMS initiated a second infringement suit against Crane asserting its infringement of the '634 patent. That action together a declaratory action suit that Crane had initiated were then consolidated into the West Virginia Action. On

Page 528

June 2, 2008, after the '915 and the '220 patents were issued, AMS initiated a third infringement action against Crane based on those two patents, which, on December 2, 2008, was also consolidated into the West Virginia Action. Crane defended the West Virginia Action on the grounds that the AMS Patents were invalid, unenforceable, and void. In January and February 2011, Crane initiated the inter partes reexaminations at issue in this case, claiming, as it did in the West Virginia Action, that the AMS Patents are invalid.[3]

On March 15, 2012, AMS and Crane settled their disputes in the West Virginia Action. As part of that settlement, they entered into a stipulation that the AMS Patents were valid and agreed upon a consent judgment to be presented for entry in the West Virginia Action. On June 11, 2012, upon joint motion of AMS and Crane, the district court entered the following Consent Judgment in the West Virginia Action:

Plaintiff Automated Merchandising Systems, Inc. (" AMS" ) and Defendant Crane Co. (" Crane" ) hereby consent to entry of judgment as follows:
1. The Court vacates all existing summary judgment orders and opinions as well as the December 12, 2011 Markman Order;
2. The parties stipulate that United States Patent Nos. 6,384,402; 6,794,634; 7,191,915; 7,343,220; and 6,732,014 are valid; and
3. All claims in this action are dismissed with prejudice.

Each party shall bear its own ...


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