On March 18, 2015, Judge Kinkeade issued an Order (available here) in Richmond v. Forever Gifts. Defendants requested that the Court sever and stay Plaintiff’s claims against Walgreen (the retailer of the accused product) pending final resolution of Plaintiff’s claims against Forever Gifts (the manufacturer of the allegedly infringing product). Judge Kinkeade granted Defendants’ request, writing:
Assuming without deciding that the joinder requirements of § 299(a) have been met, the Court nevertheless concludes that severance of Plaintiff’s claims against Walgreens is proper. In this case, Forever Gifts is the designer and manufacturer of the allegedly infringing product. Walgreens is the retailer of the allegedly infringing product. Courts have held that patent infringement claims against a retailer, like Walgreens, are peripheral to the claims against a manufacturer. These type of “second-hand entities” had no involvement in and no essential knowledge about the alleged infringement, which begins at the design and manufacture phases.
Forever Gifts, the “upstream defendant” in this same stream of commerce patent case, is the real party in interest. It is Plaintiff’s claims against Forever Gifts, as the designer and manufacturer, that is “more likely to restore contested property rights nationwide than securing an injunction” against Walgreens, the retailer and “downstream defendant.”
Furthermore, Forever Gifts has agreed to defend and indemnify Walgreens which courts have held establishes Forever Gifts as the “real party in interest” and Walgreens, the indemnified defendant, as peripheral. Therefore, the Court concludes Plaintiff’s claims against Walgreens are peripheral to its claims against Forever Gifts. . . .
Plaintiff’s claims against Walgreens are peripheral to his claims against Forever Gifts, and those claims against Walgreens are likely to be resolved by the disposition of Plaintiff’s claims against Forever Gifts. Therefore, based on fairness, judicial economy and efficiency, the Court finds that severing the claims against Walgreens is appropriate. The Court also finds the claims against Walgreens should be stayed pending final resolution of Plaintiff’s claims against Forever Gifts.
(citations omitted).