United States District Court, D. Colorado
ORDER STAYING AND ADMINISTRATIVELY CLOSING THIS
Christine M. Arguello Judge.
the Court is Defendant Amazon.com, Inc.'s Motion to Stay
or Administratively Close this case pending the resolution of
related proceedings. (Doc. # 18.) Plaintiff Let's Go
Aero, Inc. objects to the motion. (Doc. # 22.) For the
following reasons, the Court overrules that objection, grants
the motion, and stays this case.
asserts four claims for relief against Defendant: (1) direct
patent infringement; (2) inducement and contributory
infringement; (3) trademark infringement and unfair
competition; and (4) illegally passing off infringed
products. (Doc. # 1.) All of those claims stem from
Plaintiff's foundational allegation that Defendant sold
or offered to sell products-manufactured, imported, and
supplied by non-party Cequent Performance Products, Inc.
(Cequent) and non-party Wyers Products Group, Inc.
(Wyers)-which Plaintiff claims infringe on its patents,
copyrighted materials, and trademarks related to its
“Silent Hitch Pin” and “GearCage”
products (the “Accused Products”). (Doc. # 1 at
has also initiated other earlier lawsuits related to the
alleged infringement of the Accused Products. As pertinent
here, Plaintiff commenced an infringement action against
Cequent in this District in June 2014. Let's Go Aero,
Inc. v. Cequent Performance Products, Inc., No.
1:14-cv-1600-RM-MEH. That case has been administratively
closed pending the outcome of arbitration between the parties
(the Cequent Arbitration). 1:14-cv-1600-RM-MEH, Doc. # 64.
Plaintiff also commenced an infringement action against Wyers
and U-Haul International, Inc. (U-Haul) in February 2016.
Let's Go Aero, Inc. v. U-Haul International, Inc. et
al, 1: 16-cv-00410-REB-NYW. (the “Wyers and U-Haul
Litigation”). Because the claims in that case
implicated some of the Cequent Products at issue in the
Cequent Arbitration, Magistrate Nina Wang recommended that
the case be administratively closed pending the outcome of
arbitration. 1: 16-cv-00410-REB-NYW, Doc. # 67. Of note, the
Cequent Arbitration and the Wyers and U-Haul Litigation
involve the same products implicated in this litigation and
allegedly sold or offered to be sold by Defendant.
STAY REQUEST PENDING CEQUENT ARBITRATION
Cequent Arbitration has not been resolved. A hearing took
place on June 7, 2018 and post-hearing briefing is due by
October 5, 2018. (Doc. # 23 at 1.) The parties expect a final
decision by the Arbitrator in November 2018. (Id.)
Because, Defendant argues, “the same products, same IP
rights, and same causes of action asserted in the Cequent
Arbitration . . . are asserted here, ” this Court
should stay and administratively close this case until the
Cequent Arbitration concludes. (Doc. # 18 at 4-5.) Plaintiff
objects to a stay of this case on grounds that (1) the
Cequent Arbitration has nearly concluded so a stay is
unnecessary; (2) the Cequent Arbitration will not resolve all
the claims in this case; and (3) Plaintiff has the right to
bring suit against the manufacturer (Cequent) and
the seller (Defendant) simultaneously, particularly if the
manufacturer cannot fully compensate Plaintiff.
district court has “broad discretion to stay
proceedings as an incident to its power to control its own
docket.” Clinton v. Jones, 520 U.S. 681, 708
(1997). A federal court may dismiss or stay federal
proceedings when a parallel or duplicative proceeding is
pending in another forum. Rienhardt v. Kelly, 164
F.3d 1296, 1302 (10th Cir. 1999). The doctrine likewise
applies to parallel or duplicative proceedings pending in
arbitration. THI of New Mexico at Las Cruces, LLC v.
Fox, 727 F.Supp.2d 1195, 1208 (D.N.M. 2010).
general rule favors the forum of the first-filed action, i.e.
staying the latter-filed action. O'Hare Int'l
Bank v. Lambert, 459 F.2d 328, 331 (10th Cir. 1972).
There also exists a “customer-suit exception”
which provides that litigation against the manufacturer of
infringing goods takes precedence over a suit by the patent
owner against customers of the manufacturer. Katz v. Lear
Siegler, Inc., 909 F.2d 1459, 1464 (Fed. Cir. 1990).
thoroughly considered the briefing, record, and applicable
law, the Court finds that a stay and administrative closure
pending the outcome of the Cequent Arbitration is warranted
in this case.
begin, this lawsuit and the Cequent Arbitration are
duplicative. Plaintiff in this lawsuit and the arbitration
are identical (Let's Go Aero, Inc.). Although the
defendants are not identical, for the purpose of determining
whether a stay is appropriate in this case, the Court finds
that they are “substantially the same.” See,
e.g., U.S. v. City of Las Cruces, 289 F.3d 1170, 1182
(10th Cir. 2002). The Defendant in this case is alleged to be
the seller of infringing products; the defendant in the
Cequent Arbitration is alleged to be the manufacturer of some
of those same products. Indeed, whether an infringement has
occurred is the subject of the Cequent Arbitration. Thus, the
Defendant in this case and the arbitration defendant's
interests are entirely congruent. See, e.g., Lumen
Constr., Inc. v. Brant Constr. Co., Inc., 780 F.2d 691,
695 (7th Cir. 1985) (where interests of parties in both suits
are congruent, abstention may be appropriate notwithstanding
fact that parties are not identical.). Moreover, the causes
of action asserted against the Defendant in this case are
nearly identical to the claims asserted against Cequent in
the Cequent Arbitration and are inseparable from the primary
issue being arbitrated-whether the Cequent products infringe
upon Plaintiff's patents, copyrights, or trademarks.
Thus, resolution of that issue could either render this
action unnecessary or, at the very least, narrow the issues
before this Court.
Court rejects Plaintiff's arguments that the existence of
different defendants and claims render the actions not
duplicative and a stay unwarranted. That is simply incorrect,
and numerous courts have held otherwise. See, e.g.,
Int'l Asset Mgmt., Inc. v. Holt, 487 F.Supp.2d
1274, 1284 (N.D. Okla. 2007) (finding cases parallel because
the sole issue presented in first case was also at ...