District Judge Jesse M. Furman denied defendant PilePro, LLC’s motion for stay pending the PTO’s decision on reissue and motion to strike the declaration of PilePro’s former attorney submitted by plaintiff Skyline Steel, LLC in opposition to PilePro’s motion.

Skyline brought a declaratory judgment action against PilePro seeking declaration of non-infringement and invalidity of PilePro’s U.S. Patent No. 8,556,543 (“the ’543 patent”), which relates to a method for manufacturing sheet pile wall components. The court found that a stay would significantly delay the litigation and would not simplify the issues in the current case, because the reissue application is irrelevant to the independent claims at issue in the instant action. The court also found that PilePro’s motion is “motivated to achieve either delay or a second bite at the apple” and explained that the timing and nature of PilePro’s PTO application indicate that the reissue application is “little more than a bald-faced attempt to circumvent this Court’s unfavorable ruling on claims construction.” The court noted that PilePro made clear in its briefing that it intended to reopen claim construction based on the PTO’s adjudication of its application. The court also found that PilePro waived privilege to certain attorney client communications concerning the process of obtaining the German parent of the ’543 patent because PilePro’s previous arguments supporting its good faith reliance on advice of counsel depend on the similarity between the German parent and the ’543 patent. Additionally, treating the patents separately directly conflicted with PilePro’s previously adopted strategy of tying all of its patents together—even calling them the “’543 patent family.” Accordingly, the court found that Skyline is entitled to information regarding the process of obtaining the German parent to assess the reasonableness of relying on German counsels’ opinions when asserting infringement of the ’543 patent. Finally, the court ordered letter briefs from the parties addressing the propriety of the redactions in PilePro’s reply brief in support of its motion to stay, finding that “the mere fact that information is subject to confidentiality agreement between the litigants is not a valid basis for overcoming the presumption in favor of public access to judicial documents.”

Case: Skyline Steel, LLC v. PilePro, LLC, No. 13-CV-08171(JMF) (S.D.N.Y. Feb. 9, 2015)