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Norred v. Medtronic, Inc.

United States District Court, District of Kansas

February 12, 2014

TROY R. NORRED, M.D., Plaintiff,
v.
MEDTRONIC, INC., et al., Defendants.

MEMORANDUM AND ORDER

Teresa J. James, United States Magistrate Judge

This matter is before the Court on Defendants’ Motion to Stay Proceedings Pending Inter Partes Review of U.S. Patent No. 6, 482, 228 (ECF No. 46). Defendants request an order staying this action pending a decision by the Patent Trial and Appeal Board on Defendants’ petitions to institute an inter partes review of the patent at issue in this case. Plaintiff opposes the motion. As explained below, the motion to stay proceeding is granted.

I. FACTS

Plaintiff filed this patent infringement case on February 6, 2013, alleging that Defendants’ artificial heart valves infringe upon his patent, United States Patent No. 6, 482, 228 (“the ‘228 patent”). On August 7, 2013, the Court held a scheduling conference in this case. The Scheduling Order entered on August 19, 2013 sets a Markman claim construction hearing for May 2014. It sets October 1, 2014 and October 31, 2014 as respective deadlines for completion of discovery and for filing dispositive motions, as well setting the pretrial conference in October 2014. No trial date has been set.

On October 31, 2013, Defendants filed two petitions with the Patent Trial and Appeal Board (“PTAB”) for inter partes review based on four references anticipating claims 16-20 and six references anticipating claims 20-24 of the ‘228 patent. Defendants claim that they filed the petitions after conducting a prior art search and identifying a large number of prior art references that were not considered by the United States Patent and Trademark Office (“PTO”) in examining Plaintiff’s patent application.

Defendants filed the instant motion to stay this case on November 15, 2013.

II. MOTION TO STAY CASE PENDING PETITIONS FOR INTER PARTES

REVIEW

The federal courts that have considered motions to stay litigation pending either a ruling on a petition for inter partes review or the review itself have found the three following factors significant in deciding whether to stay the judicial proceedings: (1) whether discovery is complete and whether a trial date has been set; (2) whether a stay will simplify the issues in question and trial of the case; and (3) whether a stay would unduly prejudice or present a clear tactical disadvantage to the nonmoving party.[1] Courts in the District of Kansas have also considered similar factors in deciding whether to stay litigation pending a party’s request for the PTO to reexamine the patent at issue.[2] In Braintree Laboratories, the court noted that a stay may not be appropriate where “undue prejudice would result or one party would suffer a clear tactical disadvantage, ” or “if discovery has been completed or the case is otherwise in a late stage.”[3] In ScriptPro, the court granted a motion to stay finding that discovery and trial would be simplified by the PTO’s reexamination of the patent and the benefits of stay of action would outweigh any prejudice to the defendant.[4] These cases have also noted a “liberal policy in favor of granting motions to stay proceedings pending the outcome of [the PTO]’s reexamination or reissuance proceedings.”[5]

The Court concludes that it is appropriate here to use the above-cited factors in determining whether to stay this action until the PTAB rules on Defendants’ petitions to institute an inter partes review of the ‘228 patent.

A. Stage of the Litigation

The first factor the Court considers in determining whether to stay the case is the stage of the proceedings, including whether discovery is complete and whether a trial date has been set. Another important consideration is whether the parties have fully briefed the issue of claim construction, attended a Markman hearing, and received a claim construction order.[6] The expenditure of resources by the Court can also be an important factor in evaluating the stage of the proceedings.[7] If the Court has invested significant resources in becoming familiar with the patents, relevant art, the products, and claim construction, it would be a waste of judicial resources to delay litigating the instant matter for the length of time necessary to conclude the reexamination process.[8]

Defendants argue that a stay is appropriate here because the case is in its infancy. Discovery has only just begun, with only initial disclosures under Fed.R.Civ.P. 26 and some preliminary document discovery exchanged. No depositions have been taken, nor expert reports exchanged. Per the Court’s Scheduling Order, the discovery period will be open until October 1, 2014, with the deadline to file dispositive motions set in late October 2014. No claim construction briefing is due until March 2014. Finally, the Court has not set a trial date.

Plaintiff disagrees, asserting that while this lawsuit was filed in February 2013, the origin of this litigation traces back to 2009. At that time, Plaintiff and Defendant Medtronic had extensive discussions about Plaintiff’s infringement allegations and the ‘228 patent. Plaintiff argues that Defendants could have challenged the validity of the ‘228 patent then, without waiting for him to seek recourse in federal court. Alternatively, Defendants could have acted promptly upon learning of this lawsuit. Although Defendants received a copy of the Complaint in February, months passed without Defendants petitioning or indicating that they would petition for inter partes review. Instead, they actively litigated this matter, ...


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