1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 SOUTHERN DISTRICT OF CALIFORNIA 10 11 ACCO BRANDS USA LLC and Case No.: 3:24-cv-1100-JO-KSC

BENSUSSEN DEUTSCH &

12

ASSOCIATES LLC,

13 ORDER EXERCISING SUBJECT Plaintiffs,

MATTER JURISDICTION OVER

14 v. AND STAYING PLAINTIFFS’ 15 COUNTS I-IV AND IX

PERFORMANCE DESIGNED

16 PRODUCTS LLC, 17 Defendant. 18 19 20 On November 14, 2024, the Court held oral argument on Defendant Performance 21 Designed Products LLC’s (“PDP”) motion to dismiss, Dkt. 14-1. Dkt. 26. As stated on 22 the record, the Court found that it had subject matter jurisdiction over these claims, but 23 exercised its discretion pursuant to the Declaratory Judgment Act, 28 U.S.C. § 2201, to 24 stay these counts. 25 The Court briefly recaps its reasoning here for the convenience of the parties. 26 Critically, the Court’s resolution of patent validity and infringement issues would not 27 necessarily aid the state court’s adjudication of the contract claims whereas the state court’s 28 resolution of such claims has the potential to obviate or significantly reduce the need for 1 litigation here. In order to find that Plaintiffs ACCO Brands USA LLC (“ACCO”) and 2 ||Bensussen Deutsch & Associates LLC (“BDA”) breached the settlement, the state court 3 ||needs to determine whether they sold licensed products as defined by the terms in the 4 ||contract—not whether PDP infringed valid patents pursuant to patent law. 5 || Studiengesellschaft Kohle, M.B.H. v. Shell Oil Co., 112 F.3d 1561, 1568 (Fed. Cir. 1997) 6 || (explaining contract rights to royalties may be enforced irrespective of patent infringement 7 || and validity so long as doing so will not frustrate federal patent policy). On the other hand, 8 ||a state court finding that PDP is entitled to royalties per its contract with ACCO and BDA 9 || will moot most or all of the validity and infringement claims at issue here because PDP 10 |} will have a contractual avenue for relief that does not rely on patent validity or 11 |/infringement. Moreover, the state contract action may resolve whether the contract 12 provision banning patent validity and infringement challenges is valid. If the state court 13 concludes that these terms are enforceable, the validity claims before the federal court will 14 || be mooted on those grounds as well. See Diamond Scientific Co. v. Ambico, Inc., 848 F.2d 15 }}1220, 1224-25 (Fed. Cir. 1988) (“[D]espite the public policy encouraging people to 16 challenge potentially invalid patents, there are still circumstances in which the equities of 17 || the contractual relationships between the parties should deprive one party . . . of the right 18 || to bring that challenge.”). By staying this case, the Court ensures that it does not expend 19 and resources resolving controversies that may ultimately have no bearing on the 20 ||rights of the parties. Ford Motor Co. v. United States, 811 F.3d 1371, 1379 (Fed. Cir. 21 ||2016). 22 The Court therefore DENIED IN PART AND GRANTED IN PART Defendant’s 23 motion to dismiss Counts I-IV and IX, finding that it has subject matter jurisdiction over 24 || these claims, but exercising its discretion to stay these claims. Dkt. 14-1. 25 IT IS SO ORDERED. 26 || Dated: December 3, 2024 27 —ZL 28 Bee