Nanobebe US Inc. v. Mayborn Limited
- Rochon
- 1:21-cv-08444
- U.S. District Court · Southern District of New York
- 3
Nanobebe v. Mayborn: Judge Rochon would not adjourn the Markman hearing, which will proceed as scheduled while any stay motion is considered.
Nanobebe US Inc.'s request to postpone the February 22, 2023 Markman hearing was not granted; the hearing would proceed, and the court would consider any later motion to stay.
What happened
In Nanobebe US Inc. v. Mayborn (UK) Limited, Nanobebe asked to postpone a February 22, 2023 hearing about the meaning of disputed patent claims. Nanobebe said it intended to seek a pause based on related patent-review proceedings.
The case had been pending since October 2021, discovery was complete, and the claim-meaning briefing had finished. The Patent and Trademark Office had begun reviewing one patent claim challenged by third parties, but that claim was not part of this lawsuit. Nanobebe had not yet filed its proposed motion to pause the case.
Judge Jennifer L. Rochon declined to postpone the hearing. She said the hearing would proceed on February 22 as scheduled, while the court would consider any later motion to pause the case.
The detailed version
- Nanobebe US Inc. v. Mayborn Limited · No. 1:21-cv-08444
- Rochon
- Feb. 6, 2023
Background
Nanobebe asked the court to adjourn, or postpone, the February 22, 2023 Markman hearing. A Markman hearing is a hearing at which a court determines the meaning of patent claims. Nanobebe said it intended to file a motion to stay, meaning a request to pause the case, based on two related inter partes review proceedings before the United States Patent and Trademark Office.
The case had been pending since October 13, 2021. The opinion states that discovery had been conducted, claim-construction briefing had been completed on November 30, 2022, and the Markman hearing had already been rescheduled once. The hearing had been scheduled since November 4, 2022, and the court and parties had prepared for it, including through technology tutorials.
Related Patent Review Proceedings
Third parties Comotomo, Inc. and Comotomo Corp. filed a petition for inter partes review challenging the validity of the patents at issue, identified in the opinion as the '930 and '244 Patents. On January 24, 2023, the Patent and Trademark Office granted the petition as to the '930 Patent and denied it as to the '244 Patent. According to Mayborn, the review of the '930 Patent concerned only claim 13, which was not at issue in this infringement action, and Comotomo had offered to withdraw that review.
Nanobebe had said in an October 14, 2022 letter that it was likely to file its own review petition shortly, but it did not file that request until January 12, 2023. The Patent and Trademark Office had until July 12, 2023, to decide whether to institute review of Nanobebe's request. When Nanobebe requested an adjournment on February 1, 2023, it still had not filed its motion to stay.
Ruling
The court stated that it would not adjourn the Markman hearing. It relied on the court's discretion over whether to postpone hearings and cited the prior extensions and postponements in this case, as well as the preparation already undertaken for the scheduled hearing.
The court said it would evaluate any motion to stay that Nanobebe later filed. It also noted that, at that point, a review request that had not yet been instituted did not appear to support pausing the lawsuit between the parties. The Markman hearing was ordered to proceed as scheduled on February 22, 2023.
Read the full 3-page opinion on CourtListener, the free public archive maintained by the Free Law Project.