ORDER
Thеre has been no objection to the excellent Report and Recommendation (Dkt. No. 35) prepared by United States Magistrate Judge David E. Peebles. 1 Upon re *423 view, this Court adopts in full the discussion and recommendations regarding the motions for a preliminary injunction (Dkt. No. 6) and a stay (Dkt. No. 24). It is therefore
ORDERED that the Report and Recommendation of United States Magistrate Judge David E. Peebles (Dkt. No. 35) is accepted and adopted; and it is further
ORDERED that plaintiffs motion for preliminary injunction (Dkt. No. 6) is denied; and it is further
ORDERED that defendant’s cross motion (Dkt. No. 24) for a stay of litigation pending the outcome of reexamination proceedings by the United States Patent and Trademark Office is granted; and it is further
ORDERED that counsel is directed to notify the Court when the United States Patent and Trademark Office has completed the reexamination proceedings.
IT IS SO ORDERED.
REPORT AND RECOMMENDATION
Plaintiff Pass & Seymour, Inc. (“P & S”), a manufacturer and distributor of electrical wiring products headquartered in Syracuse, New York, has commenced this action asserting patent infringement claims against defendant Hubbell Incorporated (“Hubbell”), a Connecticut — based competitor. In its complaint, P & S alleges that Hubbell’s quick-connect product, designed to enhance efficiency in the installation of wiring devices such as electrical sockets and switches, is a “knock-off’ of plaintiffs hugely successful PLUG-TAIL product and infringes the underlying patents under which PLUG-TAIL is manufactured and sold.
In furtherance of its efforts to sideline one of only a handful of potential direct competitors in what is described as a “niche market”, P & S has moved for a preliminary injunction precluding Hubbell from marketing its accused product during the pendency of this action. Hubbell has since countered with an application for a stay of the case based upon its application to the United States Patent and Trademark Office (“PTO”) for reexamination of the patent now in suit.
Having carefully reviewed the parties’ submissions and considered the evidence and testimony adduced during a hearing conducted to address the pending cross-motions, which have been referred to me for the issuance of a report, I recommend against granting the requested preliminary injunction, finding that legitimate questions have been raised regarding the validity of plaintiffs patent, and thus the likelihood that P & S will prevail at trial, and that consideration of the other relevant factors which inform the preliminary injunction analysis including, inter alia, whether plaintiff will suffer irreparable harm in the absence of an injunction, militates against the award of such relief. Additionally, because the results of a reexamination of plaintiffs patent could allow the court and the parties to benefit from the PTO’s expertise in addressing the validity of the patent in suit and potentially avoid considerable litigation expense, I recommend that this action be stayed until such time as the reconsideration process is concluded or the PTO declines to entertain Hubbell’s request.
I. BACKGROUND
Plaintiff P & S, a New York corporation with its principal place of business locatеd *424 in Syracuse, New York, is a well-known manufacturer and distributor of electrical wiring products throughout the United States. Among the products offered by P & S is a newly developed device sold under the brand name PLUG-TAIL. The PLUG-TAIL, which represents an embodiment of multiple patents held by P & S, including U.S. Patent No. 7,189,110 (the “'110 patent”) issued by the PTO on March 13, 2007, is a device designed to improve the speed and ease with which electrical devices such as electrical sockets and switches are installed, particularly during the construction process. In one particular iteration of the PLUG-TAIL, stripped ends of the three insulated wires typically included within a bundled electrical power source cable are electrically coupled, through the use of a wire nut or electrical tape, to correspondingly colored cables forming part of a plug connector. 1 In some models of the PLUG-TAIL device these electrical transmission wires may be fed directly into the housing of the plug connector and affixed through crimping or some other similar means. The housing portion of the plug connector into which the wires are fed is then plugged into a receptacle on the rear surface of the particular electrical wiring device, thus completing the circuit. PLUG-TAIL devices are particularly well-suited for installation in health care facilities, educational institutions, retail establishments, hospitality locations, and multiple dwelling housing units. 2
P & S markets and promotes its PLUG-TAIL device as a means of reducing the time required to install electrical devices and permitting installation by less-experienced electricians, thereby significantly reducing labor costs associated with those installations. P & S thus touts the benefits of utilizing the PLUG-TAIL system over a conventional plug or switch, the installation of which typically requires that a stripped end of each of the three source wires be individually connected to the device by wrapping it around a screw on the apparatus and tightening that scrеw.
Bringing the PLUG-TAIL, which is representative of a quick-connect device introduced by P & S in or about June of 2004 to what was then a relatively young market, to a point of commercial viability entailed significant investment by P & S in terms of both research and development, and advertising. The results of that investment have proven to be extremely favorable; sales of the P & S PLUG-TAIL devices have increased from $503,182 for the portion of 2004 during which the product was available, to a pinnacle of $2,084,633 in 2006, with the expectation, based upon year-to-date sales, that that figure will double in 2007.
P & S introduced its PLUG-TAIL, the first commercially-available quick-connect device, under U.S. Patent No. 6,994,585 (the “'585 Patent”) issued on February 7, 2006, and addressing certain aspects of the PLUG-TAIL device design. The '110 patent was issued as a “continuation' — in— part” of the application leading to the issuance of '585 patent, and was followed by the issuance on March 27, 2007 of U.S. Patent No. 7,195,517 (the “'517 Patent”) as a “continuation” of the application which *425 led to the issuance of the '110 patent. 3
The '110 рatent, one of the two patents implicated in the pending motion for preliminary injunction, contains a total of forty-six claims, comprised of four of which are independent (claims one, twenty-one, twenty-five, and thirty-five) with the balance being dependent. Although plaintiffs complaint is not so specific or necessarily limited, in its motion for preliminary injunction plaintiff places reliance solely upon claims 25 and 29 of the '110 patent. The first of those claims specifies
[a]n electrical wiring system comprising: a plug connector including a plurality of plug contacts, the plug connector being configured to terminate a plurality of wires; and
an electrical wiring device including a cover member, a body member having a back major surface, and a ground strap disposed between the cover member and the body member, the body member including a receptacle configured to accept the plug connector and a plurality of device contаcts, the plurality of device contacts being configured to mate with the plurality of plug contacts when the plug connector is inserted into the receptacle, a distance from the ground strap to the back major surface is less than 2.5 inches.
Claim 29 adds the limitation that the distance between “a major plug surface to the back major surface is approximately 0.5 inches or less,” to enhance compactness of the device and to allow for additional space for the housing of wires within the box into which it is installed.
Plaintiffs quick-connect patents, dating back to the '585 patent, have not been without controversy. On November 29, 2006, Hubbell sought reexamination of the '585 patent by the PTO. That request was granted, and resulted in a PTO office action, mailed on March 26, 2007, rejecting the claims of the '585 patent as unpatentable under 35 U.S.C. § 102 and/or § 103 in light of prior art. P & S has since filed a response with the PTO substantially amending the scope of the '585 claims.
On April 11, 2007 Hubbell sought reexamination of thе '110 patent by the PTO. A similar request for reexamination, challenging the more recent '517 patent, was filed by Hubbell on May 8, 2007. The PTO has yet to respond to those requests, although under the agency’s rules of practice those responses are not due until July 11, 2007 and August 8, 2007, respectively.
This action was precipitated by defendant Hubbell’s announcement that it will soon be offering quick-connect products to compete with the P & S PLUG-TAIL line. In connection with that initiative, Hubbell has begun offering a Bryant brand device marketed as including a SNAP CONNECT feature, with many similarities to the P & S PLUG-TAIL quick-connect device.
In its submissions, Hubbell does not seriously dispute that its SNAP CONNECT product infringes claims twenty-five and twenty-nine of the '110 patent. 4 Rather, *426 defendant’s opposition to the preliminary injunction motion centers upon its contention that the '110 patent is invalid over the prior art, and impermissibly vague. The prior art chiefly relied upon by Hubbell in making that argument is U.S. Patent No. 4,842,551, issued on June 27, 1989 to Anthony J. Heimann (the “Heimann patent”) for a “modular connector assembly ... for ... an electrical utility box.” The focus of the Heimann patent is a wire harness or cable sheath fed into an electrical box, with a clamping mechanism to hold the wires in place. According to drawings reflecting one particular embodiment, at the end of the sheath are multiple plug connectors designed to fit into, and be held frictionally by, receptacles in the socket or other device into which it is to be wired.
II. PROCEDURAL HISTORY
Plaintiff commenced this action on March 13, 2007, asserting a claim of infringement against Hubbell under the '110 patent. Dkt. No. 1. An amended complaint was later filed on March 28, 2007, adding a second claim alleging infringement of the '517 patent. 5 Dkt. No. 9. Issue has been joined by the filing on April 10, 2007 of an answer to plaintiffs complaint, with inclusion of both affirmative defenses and counterclaims asserting, inter alia, invalidity of the '110 and '517 patents. Dkt. No. 10.
On March 20, 2007 P & S moved for the issuance of a preliminary injunction prohibiting Hubbell from marketing its competing, accused quick-connect devices, pending final disposition of the action. Dkt. No. 6. Defendant has since submitted papers in oppоsition to plaintiffs preliminary injunction motion and in support of a cross-motion for a stay of proceedings in the case, pending completion of the reexamination process by the PTO. Dkt. Nos. 24-27. Plaintiffs motion for a preliminary injunction has been referred to me for the issuance of a report and recommendation to Chief Judge Norman A. Mordue. 6 , 7 See Dkt. No. 18.
*427 III. DISCUSSION
A. Plaintiffs Motion For A Preliminary Injunction
1. Preliminary Injunction Standard
Rule 65 of the Federal Rules of Civil Procedure empowers a district court to enter a preliminary injunction. The decision of whether to grant a preliminary injunction rests within the sound discretion of the trial court.
See Jayaraj v. Scappini
A patent holder claiming infringement properly may properly make an application to a court for the entry of a preliminary injunction.
See
35 U.S.C. § 283. In a patent case, the preliminary injunction calculus requires the court to consider four factors, including “(1) the likelihood of the patentee’s success on the merits; (2) irreparable harm if the injunction is not granted; (3) the balance of hardships between the parties; and (4) the public interest.”
Oakley, Inc. v. Sunglass Hut Int’l,
When assessing the likelihood of success on the merits a court must examine the issues of patent validity and infringement. Analysis of the likelihood of infringement requires a determination of the scope and meaning of the patent claims asserted, followed by comparison of the properly construed claims to the accused device.
Oakley,
*428
The law enshrouds a regularly issued patent with a presumption of validity. 35 U.S.C. § 282;
see Pfizer, Inc. v. Apotex, Inc.,
2. Likelihood of Success on the Merits Claim 25 of the '110 patent consists of claim terms which are largely uncontroversial. That claim in essence specifies 1) an electrical wiring system, comprising 2) a plug connector with multiple contacts being configured to terminate multiple wires, and 3) an electrical wiring device including a cover' member, a body member having a back major surface and ground strap disposed between the cover member and the body member, with 4) the body member including a receptacle configured to accept the plug connector and the multiple device contacts, with 5) the multiple device contacts being configured to meet with the multiple plug contacts when the plug connector is inserted into the receptacle; and 6) containing a distance between a ground strap and the back major surface of less than two and one-half inches. Claim twenty-nine adds the limitation that the distance between a major plug surface and the back major surface of the device, when the plug is connected into the device, is approximately one-half inches or less.
a. Infringement
There can be little doubt that plaintiff has made a strong showing of infringement — a matter which Hubbell does not vigorously contest. The proposed Hubbell quick-connect device, and in particular the Hubbell Snap 5362 referenced in its marketing materials, appears to read on all of the limitations of claim twenty five, as so construed. 8
b. Invalidity
The true battleground in this case, for purposes of likelihood of success on the merits, is found in the invalidity arena. Hubbell asserts that claims twenty-five *429 and twenty-nine of the '110 patent are invalid on a variety of bases including, inter alia, for obviousness as well as based upon indefiniteness and the failure to name John Benoit as the main inventor.
i. Inventorship
Thе question of inventorship is easily dispelled. Hubbell’s argument in this regard implicates 35 U.S.C. § 116 which provides, with respect to joint inventors, that
[w]hen an invention is made by two or more persons jointly, they shall apply for patent jointly and each make the required oath .... Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent.
35 U.S.C. § 116. Section 103(a), however, provides that “[patentability shall not be negatived by the manner in which the invention was made.” 35 U.S.C. § 103(a). Instead, under 35 U.S.C. § 256,
[w]henever through error a person is named in an issued patent as the inventor, or through error an inventor is not named in an issued patent and such error arose without any deceptive intention on his part, the Director may, on application of all the parties and assignees, with proof of the facts and such other requirements as may be imposed, issue a certificate correcting such error. The error of omitting inventors or naming persons who are not inventors shall not invalidate the patent in which such error occurred if it can be corrected as provided in this section. The court before which such matter is called into question may order correction on the patent on notice and hearing of all parties concerned and the Director shall issue a certifícate accordingly.
35 U.S.C. § 256. According to one court within this district,
[t]his rule is meant to allow the correction of honest mistakes. It is essentially an equitable rule which says that patents should not be invalidated for technical reasons which do not harm either the public or individual litigants, and where the moving party has obtained no fraudulent gain.
U.S. Indus., Inc. v. Norton Co.,
ii. Obviousness
Thе principal thrust of defendant’s invalidity argument is obviousness^ — -that the claims now in issue were obvious to one of ordinary skill in the art at the time of the invention, based in large part upon consideration of the Heimann patent. While that patent was listed on the front page of the '110 patent as having been included within the prosecution history, it was not applied as a basis for rejecting the '110 patent claims. Defendant Hubbell has argued, somewhat convincingly, that the Heimann patent discloses all or virtually all of the limitations of claims twenty-five and twenty-nine within the '110 patent.
A patent claim is invalid if “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” 35 U.S.C. § 103(a);
see also Merck & Co. v. Teva
*430
Pharm. USA, Inc.,
In cases involving the combination of familiar elements in a patent in accordance with known methods, the Supreme Court has emphasized that an invention likely will be obvious when it simply elicits predictable results.
KSR Int’l,
A patent comprised of multiple elements, however, “is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.”
Id.
at 1741;
see also Grain Processing Corp. v. Am. Maize-Prods. Co.,
*431
Courts nonetheless are cautioned, when assessing obviousness, to avoid combining elements of prior art through the bias of hindsight which otherwise would not have been combined but for the creativity and insight of the inventor.
KSR Int'l, 127
S.Ct. at 1742;
Graham,
Against this backdrop, I have reviewed the Heimann patent in conjunction with the '110 patent to assess the issue of obviousness as to the '110 patent. The Heimann patent, issued in 1989, discloses a modular connector assembly for an electrical utility box. The various drawings associated with the invention reveal an electrical device, such as a socket, with receptacles capable of receiving plugs. The drawings also reflect the existence of one of more wire sheathes, capable of terminating wires, feeding into plugs which are then received into the back of a particular device. The patent further discloses a clamping device designed to hold the wires in place as they enter the outlet junction box.
The major distinction drawn by P & S between the Heimann device and claims twenty-five and twenty-nine of the '110 patent concern where the electrical plug wires are terminated. In the Heimann patent the electrical wires are terminated outside of the junction box into which the particular electrical device is being installed — a configuration which, P & S asserts, both teaches away from the '110 patent, which calls for termination of the electrical source wires inside the box, and would not pass muster under any applicable governing code, thus rendering the Heimann patent commercially unviable. Hubbell counters that extending the Heimann technology to terminate the wires inside of the box would have been obvious to a person of ordinary skill in the art at the time of the '110 invention. 9
Having reviewed the Heimann patent and considered it in the context of a person in ordinary skill in the art, I find the existence of serious questions regarding obviousness of the '110 patent, and in particulаr claims twenty-five and twenty-nine thereof. Accordingly, when considering the remaining factors in the preliminary injunction calculus, I do so in the context of my finding that P & S has not demonstrated the requisite likelihood of success on the merits of its claims. 10
3. Irreparable Harm
The granting of a preliminary injunction is a drastic remedy.
See Illinois Tool Works, Inc. v. Grip-Pak, Inc.,
Regardless of the nature of the claim being asserted, in order to qualify for such extraordinary equitable relief, a plaintiff must establish that absent the entry of a preliminary injunction it will suffer irreparable harm — that is, an injury for which no remedy at law, including an award of damages, is adеquate to compensate.
See Forest City Daly Housing, Inc. v. Town of North Hempstead,
This traditional standard applies with equal force in the context of patent infringement.
See Eli Lilly & Co. v. Am. Cyanamid Co.,
P & S asserts that because of the unique circumstances presented, an award of damages, in the event of a finding of infringement, would be insufficient as compensation for the harm suffered due to Hubbell’s continued infringement. Many of the arguments raised in that regard, however, are typical of those which could be advanced in any infringement action. Plaintiff argues, for example, that the denial of a preliminary injunction would be the functional equivalent of a forced license to a direct competitor, in contravention of its established practice not to open its portfolio and grant licenses under the '110 patent. Plaintiff also argues that the entry of Hubbell into the market will cause P & S to lose market share and negate the advantage of both its innovation and its extensive efforts to promote its quick-connect product, additionally maintaining that this effect will further result in the reduction of sales of other P & S products.
None of these arguments is particularly persuasive. As Hubbell convinсingly argues, the potential loss of sales is not the type of harm considered by the Federal Circuit as “special circumstances” sufficient to establish irreparable harm.
Nutrition 21,
In support of its remaining arguments, including that sale of Hubbell devices will cause price erosion, loss of P & S’s bargaining power in the market, as well as a reduction in staff and loss of research and development, plaintiff relies primarily on cases in which the party requesting the injunction has demonstrated likelihood of success on the merits, thereby implicating a presumption of irreparable harm.
See, e.g., Purdue Pharma L.P. v. Boehringer Ingelheim GMBH,
Based upon the foregoing I find that plaintiff has failed to establish the likelihood of irreparable harm, of a nature and to the degree required for the issuance of the extraordinary remedy of a preliminary injunction under applicable Federal Circuit authority.
4. Balance of Hardships
In support of its quest for an injunction, P & S contends that if Hubbell is permitted to enter the market with its infringing quick-connect device, plaintiffs marketing efforts and patent protected monopoly position will be diluted. As a *434 counterweight to this argument, Hubbell asserts that if it is not permitted the enter the freshly cultivated quick-connect market, P & S’s position will be further entrenched, with the benefit of the protection afforded by injunctive relief, thereby making it more difficult later to penetrate the market and effectively compete. 11
Both parties have effectively asserted hardship dеpending upon the outcome of this motion. At best, the factor is neutral, although in the end it probably weighs more heavily in favor of Hubbell, whose entry into the blossoming quick-connect market would be neutralized by a preliminary injunction, rather than P & S, which has already secured a competitive edge by virtue of its early entry into the field.
5. Public Interest
To be sure, there is an interest served in promoting innovation by protecting the monopoly conferred by statute, and indeed under the United States Constitution, to inventors under the patent laws.
See Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd.,
With its injunction motion, P & S seeks to further that anti-competitive edge and enhance its monopoly power in the market. In this instance, based upon P & S’s own submissions, it appears that there would be lingering effects of the anti-competitive nature of such an injunction. As P & S has noted, among the primary users of the quick-connect materials are hospitals and educational institutions. As P & S also notes, particularly in the hospital setting, acquisition of replacement parts is often necessary. Yet, any such institution constructed at a time when Hubbell was precluded from selling its product, should an injunction be granted, and plaintiffs PLUG-TAIL was thus the only available quick connect product, would be required to secure any future replacement parts from P & S in order to be compatible with the wiring and plug connector already installed into the junction box. In short, any delay in Hubbell entering into the marketplace would have lasting ripple effects and would further, unfairly, promote P & S’s market position.
In sum, considering and weighing all four factors relevant to the preliminary *435 injunction analysis, I recommend a finding that while plaintiffs proof of infringement is strong, there exist serious questions regarding the invalidity of the '110 patent claims in issue in this case, and plaintiff has presented insufficient evidence of irreparable harm. And, finding nothing that would tip the balance of hardships or the interest of the public sharply in favor of P & S, I therefore recommend denial of P & S’s motion for preliminary injunction.
B. Stay
A court in which an action is pending retains the inherent authority to stay litigation under appropriate circumstances.
See Landis v. North Am. Co.,
When considering whether to stay patent infringement litigation pending a reexamination of the patent in suit, courts generally examine three factors, including “(1) whether a stay would unduly prejudice or present a clear tactical disadvantage to the non-moving party; (2) whether a stay will simplify the issues in question and trial of the case; and (3) whether discovery is complete and whether a trial date has been set.”
Xerox Corp. v. 3Com Corp.,
In this instance, Hubbell’s motion does not appear to have been interposed for tactical reasons; nor would P & S be unduly prejudiced in terms of its litigation positions, should a stay be granted. As P
&
S tacitly acknowledges, Hubbell has not beеn dilatory in seeking reexamination of the '110 and '517 patents. Indeed, the two reexamination applications were filed by Hubbell only shortly after issuance of the respective, disputed patents. Moreover, this case is plainly in its infancy, the court not yet having conducted a Rule 16 conference or issued a case management scheduling order, thus presenting a very different situation than in many other circumstances where stays have been denied as having been sought too late in the litigation.
12
Contrast, e.g., Xerox Corp.,
An important factor figuring into the stay equation is the desirability of drawing upon the expertise of the PTO regarding the complex areas of patentability implicated in this action. It appears likely that proceedings bеfore the PTO, even if reexamination is granted, would be of limited duration, and surely would consume less time and expense than this litigation, should it be permitted to go forward. Accordingly, based upon my finding that the parties and the court could benefit immensely from the expertise of the PTO, and that its determination could potentially avoid the necessity of this case going forward, or at a minimum materially reshape the issues presented, I recommend that the stay be granted. 13
C. Motions In Limine
1. Plaintiff’s Motion
In its opposition to plaintiffs preliminary injunction motion, Hubbell has submitted a declaration of Joseph A. McGlynn, a registered patent attorney in private practice since 1974, and a former patent examiner. In his declaration, McGlynn makes several observations regarding the '110 patent and the comparison of its claims to the Heimann patent, voicing his belief “that the failure to apply the Heimann patent in a rejection of the [the '110 patent claims] was a clear error.” McGlynn Aff. (Dkt. No. 24-2) ¶ 7. P & S asserts that McGlynn’s affidavit improperly encroaches upon the court’s prerogative, and is thus impermissibly offered as expert testimony.
Upon a motion for a preliminary injunction a court must be guided by the evidentiary principles which would apply at trial and govern the admissibility of evidence, including in the form of expert testimony.
See Suisman, Shapiro, Wool, Brennan, Gray, & Greenberg, P.C. v. Suisman,
No. 04-CV-745,
[i]f scientific, technical, or other specialized knowledge will assist the trier of fact to understand the evidence or to determine a fact in issue, a witness qualified as an expert by knowledge, skill, experience, training, or education, may testify thereto in the form of an opinion or otherwise, if (1) the testimony is based upon sufficient facts or data, (2) the testimony is the product of reliable prinсiples and methods, and (3) the witness has applied the principles and methods reliably to the facts of the case.
Fed.R.Evid. 702;
see generally Kumho Tire Co., Ltd. v. Carmichael,
*437
Applying Rule 704(a), the general consensus among the various courts is that expert testimony which embraces a legal conclusion should be excluded.
See Hygh v. Jacobs,
[ujnder Rules 701 and 702, opinions must be helpful to the trier of fact, and Rule 403 provides for exclusion of evidence which wastes time. These provisions afford ample assurances against the admission of opinions which would merely tell the jury what result to reach, somewhat in manner of the oath-helpers of an earlier day. They also stand ready to exclude opinions phrased in terms of inadequately explored legal criteria. Thus the question, “Did T have capacity to make a will?” would be excluded, while the question, “Did T have sufficient mental capacity to know the nature and extent of his property and the natural objects of his bounty and to formulate a rational scheme of distribution?” would be allowed.
Hygh,
Upon application of these principles, it is clear that McGlynn’s affidavit contains at least some argument which crosses the line and unduly attempts to influence the court’s outcome on matters involving ultimate legal conclusions to be drawn. Other portions of the affidavit, however, appear potentially to be helpful to the trier of fact, and thus are permissibly offered.
See Bausch & Lomb, Inc. v. Alcon Laboratories, Inc.,
2. Defendant’s Motion
In its submissions to the court, defendant has also sought a ruling in limine, urging exclusion from consideration of plaintiffs Exhibit C to its amended complaint, purporting to bе “[a] true and correct copy of an advanced advertisement for the Snap Connect Devices” advertised by Hubbell. Amended Complaint (Dkt. No. 9) ¶ 11 Exh. C. Hubbell maintains that the exhibit was not properly authenticated, and that it was deprived of an opportunity to respond to it by virtue of the fact that it was referenced only in plaintiffs reply memorandum.
*438
As P & S properly notes, certain materials, including self-promoting advertising and press materials, are treated under the Federal Rules of Evidence as self-authenticating.
Woolsey v. Nat'l Transp. Safety Bd.,
IV. SUMMARY AND RECOMMENDATION
While plaintiff has plainly established that defendant Hubbell, a direct competitor, is poised to enter the electrical quick-connect market and compete with plaintiffs various embodiments of its '110 and '517 patents, and thus has established a strong case of infringement, significant questions exist regarding the validity of those patents, both of which may ultimately be reexamined by the PTO, at Hubbell’s request. In light of these questions, and my finding that in the event injunctive relief is denied P & S will not suffer a significant injury that cannot be compensated through remedies available at law, and finding no basis to conclude that either the balance of hardships or consideration of the public interest tips the scale markedly in plaintiffs favor, I recommend that plaintiffs motion for preliminary injunction be denied. Additionally, based upon the prospect of reexamination in the near future by the PTO and out of a desire to have the benefit of the PTO’s expertise on the thorny questions surrounding defendant’s claims of patent invalidity, I recommend the issuance of a stay of this litigation pending completion of that reexamination process. Finally, I deny both parties’ motions in limine, without prejudice to reapplication to the trial court for exclusion of the challenged evidentiary materials at trial.
Based upon the foregoing it is hereby
RECOMMENDED that plaintiffs motion for a preliminary injunction (Dkt. No. 6) be DENIED; and it is further
RECOMMENDED, that defendant’s cross-motion to stay litigation pending completion of a reexamination proceeding by the PTO (Dkt.Nos.24-27) be GRANTED, and it is further
ORDERED that the cross-motions of both parties for rulings in limine (Dkt.Nos.28, 31) be DENIED, without prejudice.
NOTICE: Pursuant to 28 U.S.C. § 636(b)(1), the parties may lodge written objections to the foregoing report. Such objections shall be filed with the Clerk of the Court within ten (10) days. FAILURE TO SO OBJECT TO THIS REPORT WILL PRECLUDE APPELLATE REVIEW. 28 U.S.C. § 636(b)(1); Fed. R.Civ.P. 6(a), 6(e) and 72;
Roldan v. Racette,
IT IS FURTHER ORDERED, that the Clerk of the Court serve a copy of this Report and Recommendation upon the parties in accordance with this court’s local rules.
Notes
. The Court notes that, subsequent to Magistrate Judge Peebles’ submission of the Report and Recommendation, the United States Patent and Trademark Office issued a decision *423 (Dkt. No. 37) granting the request for reexamination of the '110 patent, on the ground that consideration of the "Heimann” patent raises a substantial new question of patentability.
. A typical conventional electrical bundled power cable contains a neutral wire, generally white in color; a ground wire, which is normally colored green; and a "hot” wire, which is ordinarily black.
. Quick-connect devices are not generally favored for installation into single family residential dwellings in light of the significantly higher cost associated with them, as compared to the expense of acquiring traditional electrical receptacles.
. A “continuation-in-part" designation signifies that an application repeats "some substantial portion or all” of the subject included within an earlier patent. Manual of Patent Examining Procedure § 201.08;
see also Go Med. Indus. Pty., Ltd. v. Inmed Corp.,
. Lending credence to plaintiff's claim that defendant’s product is a “knock-off” of the P & S PLUG-TAIL, Hubbell has promulgated a *426 ''competitive profile analysis” in connection with its new quick-connect product which not only reveals striking similarities of Hubbell products to P & S devices, including plaintiff's ”PT 5362”, but in fact reflects that its counterpart product to that model has been designated similarly as the "SNAP5362”.
. This is the second action brought by P & S against Hubbell claiming infringement as a result of its marketing of quick-connect devices. On January 5, 2007 P & S commenced suit against Hubbell alleging infringement of the 585 Patent.
See Pass & Seymour, Inc. v. Hubbell Inc.,
No. 5:07-CV-0017,
. In addition to the pending cross-motions, both parties have interposed motions in limine. In its motion, P & S seeks exclusion of an affidavit of Joseph H. McGlynn, a patent attorney, submitted by the defendant in support of its position. Dkt. No. 28. Defendant has countered in limine, seeking exclusion from consideration on the motions of an exhibit attached to plaintiff's amended complaint, asserting unfairness associated with the fact that while the document was attached to plaintiff's amended complaint, and thus the document itself should come as no surprise, P & S did not make any arguments based upon that exhibit in connection with the pending cross-motions until submission of its reply, thus depriving Hubbell of a fair opportunity to respond. Dkt. No. 31.
.Defendant’s motion for a stay of proceedings, pending litigation, would ordinarily fall within my non-consensual jurisdiction under 28 U.S.C. §§ 636(b).
See Securities & Exchange Comm’n v. Kornman,
No. 3:04CV1803L,
. Hubbell's non-infringement argument centers principally upon the indefiniteness which, it contends, surrounds claims 25 and 29 of the '110 patent. Hubbell argues that the claims do not require the receptacle to be in the back major surface of the body member, and fail to reveal what is regarded as the "major surface” for purposes of measuring distance to the back major surface of the device. In light of my findings of serious questions surrounding defendant’s claim of invalidity based on obviousness, and that P & S has failed to establish that it will suffer irreparable harm, absent the issuance of a preliminary injunction, I will not address this argument, which substantially overlaps with one aspect of Hubbell’s invalidity defense.
. For purposes of the present motion I have accepted P & S's proposed definition of a person of ordinary skill in the art as being a person with a bachelor's degree in mechanical or еlectrical engineering, and with three years of relevant work experience in the electrical connector industry.
. In light of my finding of the existence of serious questions regarding the validity of the '110 patent on the basis of obviousness, I have not addressed Hubbell's remaining invalidity arguments, and in particular its allegations of indefiniteness surrounding the '110 patent claims.
. As the Federal Circuit has noted, ”[t]he hardship on a preliminarily enjoined manufacturer who must withdraw its product from the market before trial can be devastating.”
Illinois Tool Works,
. Following a conference with the parties the court did excuse the discovery prohibition of Rule 26(d) of the Federal Rules of Civil Procedure and permitted limited discovery to go forward despite the fact that the parties have not yet conducted a Rule 26(f) discovery planning conference.
. In the event, however, that the PTO should deny Hubbell’s request for reexamination of the '110 and '517 patents, I recommend that the stay be lifted and this case be permitted to proceed.