JVST Grp. v. Pioneer Pet Prods.

• Decision Date: 23 January 2023
• Docket Number: 22-CV-556,22-CV-839
• Parties: JVST GROUP, Plaintiff, v. PIONEER PET PRODUCTS, LLC, Defendant. PIONEER PET PRODUCTS, LLC, Plaintiff, v. JVST GROUP, Defendant.
• Court: U.S. District Court — Eastern District of Wisconsin

JVST GROUP, Plaintiff,
v.
PIONEER PET PRODUCTS, LLC, Defendant.

PIONEER PET PRODUCTS, LLC, Plaintiff,
v.
JVST GROUP, Defendant.

Nos. 22-CV-556, 22-CV-839

United States District Court, E.D. Wisconsin

January 23, 2023

DECISION AND ORDER

WILLIAM E. DUFFIN, U.S. MAGISTRATE JUDGE

1. Facts and Procedural Background

Pioneer Pet Products, LLC and JVST Group (which does business under the name Wonder Creature) both sell pet fountains-essentially water dishes for cats and dogs that recirculate water by way of a small electric pump. Pioneer owns several patents related

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to pet fountains-specifically, U.S. Patent No. 8,813,683, entitled Pet Fountain Assembly, issued on August 26, 2014; U.S. Patent No. 9,572,323, entitled Interchangeable Flow Directing Orifice Inserts and Recirculating Pet Fountain with Flow Directing Orifice Inserts, issued on February 21, 2017; and U.S. Patent No. 9,730,427, entitled Pet Fountain Assembly with Lift Tube, issued on August 15, 2017.

Pioneer alleges that certain of JVST's pet fountains infringe on its patents. JVST filed the action numbered 22-CV-556 on May 10, 2022, seeking declarations that its products do not infringe the ‘683 patent and that the ‘683 patent is invalid, as well as alleging that Pioneer tortiously interfered with its economic relationships with current and prospective customers. (ECF No. 1.^[1]) Pioneer, in turn, on July 22, 2022, filed the action numbered 22-CV-839, wherein it alleges that JVST is infringing the ‘683, ‘323, and ‘427 patents. (22-CV-839, ECF No. 1.) Pioneer also asserted these same claims as counterclaims in the action initiated by JVST. (ECF No. 9.) JVST likewise asserted counterclaims in 22-CV-839, seeking declarations of invalidity and noninfringement with respect to the ‘683, ‘323, and ‘427 patents, although it did not allege tortious interference as a counterclaim. (22-CV-839, ECF No. 9)

The court granted the parties' joint motion to consolidate the two actions (ECF No. 11), and all parties consented to the full jurisdiction of this court (ECF Nos. 3, 12; 22-CV-

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839, ECF Nos. 4, 10). The court has subject matter jurisdiction pursuant to 28 U.S.C. § 1331, 1338(a), and 1367(a).

On September 2, 2022, Pioneer moved for a preliminary injunction barring JVST from selling 14 pet fountains that allegedly infringe on the ‘323 and ‘683 patents. (ECF No. 19.)

The parties submitted their joint Rule 26(f) report on September 8, 2022. (ECF No. 23.) In the report JVST stated it planned to ask the United States Patent and Trademark Office (USPTO) to reexamine the asserted patents and to ask the court to stay these proceedings pending the resolution of that review. (ECF No. 23 at 3.) On September 15, 2022, the court held a scheduling conference and issued a schedule consistent with the parties' proposals. (ECF No. 27.)

JVST filed its requests for reexamination with the USPTO on September 21 and 22, 2022. (ECF No. 36, ¶¶ 2-4.)

Briefing on Pioneer's motion for a preliminary injunction concluded on October 7, 2022, and on November 1, 2022, the court denied Pioneer's motion. (ECF No. 33); JVST Grp. v. Pioneer Pet Prods., LLC, No. 22-CV-556, 2022 U.S. Dist. LEXIS 199290 (E.D. Wis. Nov. 1, 2022). Significant in the court's conclusion was its finding that any harm Pioneer may sustain absent an injunction was likely compensable by damages and therefore not irreparable. Id, at *24-25.

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The USPTO granted JVST's requests for reexamination of the asserted patents in three separate decisions dated November 10, 16, and 17, 2022. (ECF No. 36, ¶¶ 5-7.) On November 28, 2022, counsel for JVST emailed counsel for Pioneer, inquiring whether Pioneer would agree to stay these proceedings pending the USPTO's review (ECF No. 36, ¶ 8.) Counsel for Pioneer responded on November 30, 2022, that it would not agree to a stay. (ECF No. 36, ¶ 9.) Pioneer served its first set of interrogatories and requests for production on December 2, 2022. (ECF No. 36, ¶ 10.)

On December 7, 2022, JVST moved to stay these actions pending completion of the reexamination process. (ECF No. 34.) Pioneer opposes the motion. (ECF No. 37.)

2. Applicable Law

Under 35 U.S.C. § 302 any person may ask the USPTO to undertake an ex parte reexamination a patent in light of prior art. See Samsung Elecs. Am., Inc. v. Prisua Eng'g Corp., 948 F.3d 1342, 1345 (Fed. Cir. 2020) (distinguishing ex parte reexamination, inter partes...