It's fairly common for a patentee to bring suit simultaneously against both a customer who is using or reselling an infringing product and the manufacturer who produced the product.
Sometimes the customer is the real target, and sometimes it's the manufacturer. Either way, some courts have recognized a "customer suit exception" that suggests that, under some circumstances, suits against a manufacturer should take precedence over a suit against a customer.
As courts sometimes point out, the customer suit "exception" began as an exception to the first filed rule in patent cases. But courts can also apply the principle more broadly, including to motions to stay.
For example, last week Judge Williams addressed a motion to stay under the "customer suit exception" in Colt International Clothing, Inc. v Quasar Science LLC, C.A. No. 22-213-GBW (D. Del. Feb. 17, 2023). In that case, the patentee asserted apparatus claims against a manufacturer and, in the same suit, asserted a separate patent with method claims against a customer.
In response, the customer moved to stay, arguing that the method claims would rise and fall on the same invalidity arguments asserted against the apparatus claims in the manufacturer trial. Thus, in their view, it would make sense to stay the customer suit while the suit against the manufacturer proceeds.
Judge Williams, however, found that the separate patent asserted against the customer must be evaluated independently:
[A]t this stage in the case, the Court cannot determine whether a jury that finds invalidity and non-infringement of the claims of the other Asserted Patents would also find invalidity and non-infringement of the claims of the '600 patent. . . . Also, patents in the same field may not be duplicative since the Patent Act "precludes more than one patent on the same invention." Geneva Pharms., Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 1377 (Fed. Cir. 2003) . . . . Thus, the jury must separately consider infringement and invalidity as to each claim of each Asserted Patent in this case.
The Court found that because the claims have to be litigated independently, a stay would increase the amount of work:
Turning to the stay factors, a stay would-rather than simplify issues for trial--create an unnecessary and wasteful duplicate trial. Colt fails to provide any claim-by-claim justification for its bald assertion that the invalidity of the claims of the '600 patent "would follow" from the invalidity of allegedly "underlying patents." D.I. 77 at 2. Instead, another jury in a second trial would need to review claims as to the '600 patent regardless of whether a first jury found Quasar infringed the claims of other Asserted Patents. Also, a stay would prejudice Colt by delaying its opportunity to litigate its claims as to the '600 patent against Studio Defendants. Thus, even if the early stage of this suit favors granting a stay, on balance, the stay factors weigh against granting a stay here. The Court need not consider the parties' other arguments.
It can be tough to get a "customer suit exception"-style stay when there is an independent patent asserted against the customer.
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