United States District Court, D. Delaware
WESTINGHOUSE AIR BRAKE TECHNOLOGIES CORPORATION d/b/a WABTEC CORPORATION, Plaintiff,
SIEMENS MOBILITY, INC., Defendant.
CHRISTOPHER J. BURKE UNITED STATES MAGISTRATE JUDGE
before the Court is Plaintiff Westinghouse Air Brake
Technologies Corporation's (d/b/a Wabtec Corporation)
("Plaintiff or "Wabtec") motion for a
protective order and stay of discovery pending resolution of
its motions to dismiss Defendant Siemens Mobility, Inc.'s
("Defendant" or "Siemens") antitrust,
Lanham Act and state law counterclaims ("the
counterclaims") and motion to sever those counterclaims
("Motion"). (D.I. 156) For the reasons set forth
below, the Court orders that the Motion be DENIED, as
Plaintiff has not demonstrated good cause to support the
Court finds that denial of the Motion is appropriate
primarily because, in the Court's view, the District
Court has essentially already considered and rejected the
type of stay proposed by Plaintiff. In evaluating
Defendant's prior motion for leave to amend to add the
counterclaims, (D.I. 107), Chief Judge Leonard P. Stark also
considered Defendant's related request to begin discovery
related to those counterclaims. In doing so, the District
Court was well aware of the nature of the counterclaims and
their significance to this case. Moreover, in arguing to the
District Court that it should deny Defendant's request to
commence discovery on the counterclaims, Plaintiff made much
the same argument that it now presses in its Motion-i.e.,
that permitting discovery in light of the (then-forthcoming)
motions to dismiss and sever would be inappropriate and
inefficient. (D.I. 141 at 2) And yet the District Court not
only granted Defendant's motion to amend, but it also
specifically ordered that "discovery on all claims and
counterclaims will proceed unless and until any such motion
[to dismiss or sever] is granted or other relief is
ordered." (D.I. 142) Little has changed since then.
Thus, Plaintiff s Motion reads like an (untimely) motion for
reconsideration masquerading as a motion to stay.
sure, courts do at times stay discovery as to claims like
these when motions to dismiss are pending. Mann v.
Brenner, 375 Fed.Appx. 232, 239 (3d Cir. 2010). And the
Court appreciates Plaintiffs argument that antitrust-related
counterclaims may bring significant cost and burden to this
action. Cf. Bell Atl. Corp. v. Twombly, 550 U.S.
544, 558-59 (2007); DSM Desotech Inc. v. 3DSys.
Corp., No. 08 CV 1531, 2008 WL 4812440, at *2-3 (N.D.
111. Oct. 28, 2008).
decisions on whether to grant such discovery stays are firmly
within the discretion of district courts, see Mann,
375 Fed.Appx. at 239, and such stays are not always the right
course, even in cases involving antitrust claims, see
Adriana Castro, M.D., P.A. v. Sanofi Pasteur Inc., Civ.
No. 11-7178 (JLL), 2012 WL 12918261, at *2 (D.N.J. July 18,
2012). A district court must assess each case on its own
merits, and must also be mindful of its responsibility to
keep its docket moving, so that it can provide litigants with
timely and effective resolution of their claims. Id
The District Court may have been even more mindful of the
need to keep this case moving forward, in light of
the parties' particular litigation history. The
counterclaims at issue are just one front of a larger battle
between Plaintiff and Defendant-a battle that spans two
different civil cases in this District (this action and Civil
Action Number 16-284-LPS ("the 284 Action")), which
also involve affirmative claims of patent infringement
brought by both sides regarding a significant number of
patents. It is a careful balance to keep all of these cases
and issues moving forward in a just and equitable manner,
the District Court clearly felt that staying discovery as to
the counterclaims pending the resolution of the motions to
dismiss and sever was not the right way to strike that
Court sees no reason to take a different tack on the
discovery stay question than did the District Court. It will
do its best to resolve the pending motions to dismiss and
sever as soon as it can. After doing so, if a different
result on the stay question is warranted, it will consider
that issue then. In the meantime, if Defendant's
discovery requests are overbroad or unduly burdensome,
Plaintiff can seek relief pursuant to the Federal Rules of
Civil Procedure and the Court's discovery dispute
process. See Adriana Castro, 2§Yl WL 12918261,
at *2 n.2.
foregoing reasons, Plaintiffs Motion is DENIED.
 This case has been referred to the
Court to hear and resolve certain motions, including the
instant Motion. (D.I. 38)
 After Plaintiffs patent infringement
claims were severed from the 284 Action, Plaintiff re-filed
them in a different jurisdiction, only to have Defendant
successfully transfer these claims back to this Court (i.e.,
Civil Action No. 17-1687-LPS-CJB). (D.I. 170 at 11) That
back-and-forth has caused delay in bringing Plaintiffs
affirmative patent case to resolution, and the District Court
might well have been focused on doing what it could to ensure
that Defendant's counterclaims too were not bogged down
by significant delay.
 The District Court may also have
anticipated that disputes about the scope of discovery on the
counterclaims would pop up, as they have since, (D.I. 176),
and that such disputes would themselves take time to resolve.
Pressing forward with discovery, which would allow for those
disputes to be heard and sorted out by a judge before too