Norred v. Medtronic, Inc. et al
MEMORANDUM AND ORDER granting 46 Defendants' Motion to Stay Proceedings Pending Inter Partes Review of U.S. Patent No. 6,482,228. This case and all deadlines set forth in the August 19, 2013 Scheduling Order, including all deadlines related t o the May 2014 Markman claim construction hearing before District Judge Melgren and any deadline for responding to Plaintiff's Motion for Leave of Court to Serve Corrected Initial Infringement Contentions (ECF No. 55 ), are hereby stayed until such time as the Patent Trial and Appeal Board ("PTAB") issues a ruling on Defendants' petitions for inter partes review. It is further ordered that the parties shall file a joint report advising the Court of the PTAB's decision o n Defendants' petitions, as well as the parties' respective positions as to further proceedings in this case. This report shall be filed within 14 days of the PTAB's ruling on Defendants' petitions for inter partes review, but no later than May 30, 2014. Signed by Magistrate Judge Teresa J. James on 2/12/2014. (byk)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF KANSAS
TROY R. NORRED, M.D.,
Case No. 13-2061-EFM/TJJ
MEMORANDUM AND ORDER
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.
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.
MOTION TO STAY CASE PENDING PETITIONS FOR INTER PARTES
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
Evolutionary Intelligence, LLC v. Apple, Inc., No. C 13-04201 WHA, 2014 U.S. Dist.
LEXIS 2763, at *5 (N.D. Cal. Jan. 9, 2014); Universal Elecs., Inc. v. Universal Remote Control,
Inc., 943 F. Supp. 2d 1028, 1030–31 (C.D. Cal. 2013); Pride Mobility Prods. Corp. v. Permobil,
Inc., No. 13-cv-01999, 2013 U.S. Dist. LEXIS 171911, at *6 (E.D. Pa. Aug. 14, 2013);
Automatic Mfg. Sys. v. Primera Tech., Inc., No. 6:12-cv-1727-Orl-37DAB, 2013 U.S. Dist.
LEXIS 165692, at *4 (M.D. Fla. Nov. 21, 2013); Semiconductor Energy Lab. Co., Ltd. v. Chimei
Innolux Corp., No. SACV 12-0021 JST (JPRx), 2012 U.S. Dist. LEXIS 186322, at *3–4 (C.D.
Cal. Dec. 19, 2012).
See ScriptPro LLC v. Wal-Mart Stores, Inc., No. 05-2244-CM, 2006 U.S. Dist. LEXIS
55456, at *4 (D. Kan. Aug. 8, 2006)(granting motion to stay pending reexamination of patent);
Braintree Labs., Inc. v. Nephro-Tech, Inc., No. 96-2459-JWL, 1997 U.S. Dist. LEXIS 2372, at
*29 (D. Kan. Feb. 26, 1997)(granting motion to stay proceedings for reexamination of the
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
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.
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
Braintree Labs., 1997 U.S. Dist. LEXIS 2372, at *28–29.
ScriptPro, 2006 U.S. Dist. LEXIS 55456, at *3–4.
Id. at *2; Braintree Labs., 1997 U.S. Dist. LEXIS 2372, at *27 (quoting ASCII Corp. v.
STD Entm't USA, Inc., 844 F. Supp. 1378, 1381 (N.D. Cal. 1994)).
Interwoven. Inc. v. Vertical Computer Sys., Inc., No. C 10-04645 RS, 2012 U.S. Dist.
LEXIS 30946, 2012 WL 761692, at *4 (N.D. Cal. Mar. 8, 2012)
Universal Elecs., 2013 U.S. Dist. LEXIS 64154, at *8.
resources to delay litigating the instant matter for the length of time necessary to conclude the
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, participating in the Rule 26(f)
planning conference and the preparation of the required report, exchanging initial disclosures,
serving and responding to written discovery, and participating in mediation.
The Court finds that this case is still in its early stages, with the Scheduling Order entered
only a few months before this motion was filed. Little discovery other than initial disclosures and
some preliminary document discovery has been exchanged. No depositions have been taken, no
interrogatories have been served, and no expert reports have been exchanged. The discovery
APP Pharm., LLC v. Ameridose LLC, No. 10-4109 JAP, 2011 U.S. Dist. LEXIS 23318,
2011 WL 816622, at *2 (D.N.J. Mar. 8, 2011).
deadline is still more than seven months away. Although a Markman hearing is scheduled for
May 2014, the parties’ claim construction briefing is not yet due. Many of the other significant
case deadlines for completion of discovery and filing dispositive motions are many months away
and the case has not been set for trial. Few judicial resources to this point have been utilized in
becoming familiar with the patents, the product, or claim construction. Defendants have
explained that preparing an inter partes petition is a significant undertaking, requiring them to
retain separate counsel to review and analyze the ‘228 patent, conduct international prior art
searches, and analyze the search results. They filed their petitions for inter partes review over
three months before the statutory deadline for filing such petitions and filed their motion to stay
within two weeks after filing the petitions. This factor weighs in favor of a stay.
Simplification or Elimination of Issues
The second factor the Court considers is whether a stay will simplify the issues in
question and the trial of the case. Because the PTAB has not yet determined whether to institute
an inter partes review of the ‘228 patent, the Court is unable to determine whether a stay would
simplify or eliminate any issues in this case. As noted by the court in Universal Electronics,
“[t]he undecided status of the petitions [for inter partes review] clouds the simplification
Defendants argue that regardless of the PTAB’s decision on the inter partes petitions,
there are significant benefits to staying this case. First, if PTAB institutes a review and the
asserted claims are invalidated, this case will likely be dismissed. Second, if the asserted claims
are amended, this case will proceed according to the amended claims, rather than the claims that
were cancelled during the review. Third, a stay will avoid the need for multiple claim
943 F. Supp. 2d at 1033.
construction hearings. According to Defendants, without a stay, the claim construction hearing
currently scheduled for May 2014 would be rendered superfluous if Plaintiff subsequently
presents arguments to the PTAB affecting the scope of the claims. Defendants also argue that
statistically, it is likely that an inter partes review of the ‘228 patent will be initiated. They cite
statistics that in the last year (from September 2012 through July 2013), where 126 out of the 141
(89%) of petitions for inter partes review resulted in an instituted trial.
Plaintiff argues that at this point, it is speculative to conclude the PTAB will initiate an
inter partes review of the ‘228 patent or that any such review will end in Defendants’ favor.
Given the stage and history of these proceedings, the benefit of a stay is also speculative at best.
If the PTAB does not institute an inter partes review, staying the case merely delays this
litigation and the inevitable work that will need to be completed to bring this matter to a
conclusion. If the PTAB does institute an inter partes review, this work will still need to be
completed unless the ‘228 patent is invalidated. Plaintiff does admit, however, that if the PTAB
does institute a review of the ‘228 patent, the parties will likely jointly request modification of
the Scheduling Order to accommodate the 12 to 18-month review period.
Given the likelihood that that the PTAB will institute an inter partes review, based on the
historical statistics cited by Defendants and the Court’s understanding of the bases for
Defendants’ petitions filed with the PTAB, the Court finds that there are issues in this cases
which would likely be simplified or eliminated altogether if the PTAB grants Defendants’
petitions for an inter partes review. Even though the PTAB has not yet decided whether to
initiate an inter partes review, a short stay of this case until the PTAB issues its decision whether
to grant inter partes review of any or all of the asserted claims is warranted.10 The Court finds
this factor thus weighs in favor of a stay.
Prejudice or Clear Tactical Disadvantage
The third factor to be considered in determining whether to stay this case is undue
prejudice or a clear tactical disadvantage to the nonmoving party. In evaluating this factor,
“courts have taken a practical approach to determining whether the non-movant will suffer undue
prejudice from a stay. A court may deny a request for a stay where the movant has unjustifiably
delayed seeking reexamination, or where the stay will do nothing but delay the proceedings.”
Mere delay in the litigation, however, does not establish undue prejudice.
Defendants argue that a stay of this action would not unduly prejudice Plaintiff, nor place
him at any tactical disadvantage. They state that Plaintiff does not compete with Defendants and
is, therefore, at no risk of losing market share during the stay. They also argue that the purpose of
this action is not to enjoin Defendants’ activities, but to extract a licensing agreement and
royalties. Should infringement ultimately be found in this case, Defendants contend that money
damages will adequately compensate Plaintiff for any lost licensing revenue.
Although Plaintiff objects to staying this action, arguing that a stay will likely accomplish
nothing but delay, he does not argue that he will be prejudiced or suffer a tactical disadvantage.
Instead, he argues that he should be able to prosecute his claims, to take discovery, and to set his
litigation positions, at least until such a time as the PTAB takes an interest in reviewing the
See Evolutionary Intelligence, 2014 U.S. Dist. LEXIS 2783, at *7 (finding a full stay
not warranted because the PTAB may decide to deny review, but granting a modest stay to learn
of the PTAB’s decision whether to grant inter partes review of any or all of the asserted claims).
Here, the Court does not find that Plaintiff will be unduly prejudiced by staying this
action until the PTAB makes its decision on Defendants’ petitions for an inter partes review. As
pointed out by Defendants, the PTAB has a deadline under 35 U.S.C. § 314(b) in which to
determine whether to institute an inter partes review. Defendants filed their petitions in late
October 2013, thus a decision by the PTAB should be forthcoming in the next few months.
There is also nothing suggesting that Defendants purposefully delayed in filing their petitions for
an inter partes review with the PTAB or their motion to stay this action. The Court therefore
finds that this factor weighs in favor of a stay.
Under the above-discussed factors, the Court finds that a short stay is warranted in this
case. This litigation is yet in its early stages with minimal discovery exchanged and only very
limited judicial resources expended. A stay until the PTAB rules on Defendants’ petitions for
inter partes review is also warranted given the statistical likelihood that the PTAB will grant the
petitions and initiate an inter partes review, which will likely simplify or eliminate issues in this
case. Finally, the Court finds that Plaintiff will suffer little prejudice by a short stay of this case
until the PTAB rules on Defendants’ review petitions.
The Court therefore grants the motion and stays this litigation until the PTAB issues its
ruling on Defendants’ petitions for inter partes review on the ‘228 patent. In order to keep the
Court advised on the status of the PTAB proceedings, the parties shall file a joint report advising
the Court of the PTAB’s decision on Defendants’ petitions and the parties’ respective positions
as to further proceedings in this case. This report shall be filed within 14 days of the PTAB’s
ruling on Defendants’ petitions for inter partes review, but in the event of delay in issuance of
the PTAB’s ruling, no later than May 30, 2014.
IT IS THEREFORE ORDERED THAT Defendants’ Motion to Stay Proceedings
Pending Inter Partes Review of U.S. Patent No. 6,482,228 (ECF No. 46) is granted. This case
and all deadlines set forth in the August 19, 2013 Scheduling Order, including all deadlines
related to the May 2014 Markman claim construction hearing before District Judge Melgren and
any deadline for responding to Plaintiff’s Motion for Leave of Court to Serve Corrected Initial
Infringement Contentions (ECF No. 55), are hereby stayed until such time as the PTAB issues a
ruling on Defendants’ petitions for inter partes review.
IT IS FURTHER ORDERED THAT the parties shall file a joint report advising the
Court of the PTAB’s decision on Defendants’ petitions, as well as the parties’ respective
positions as to further proceedings in this case. This report shall be filed within 14 days of the
PTAB’s ruling on Defendants’ petitions for inter partes review, but no later than May 30, 2014.
IT IS SO ORDERED.
Dated this 12th day of February, 2014, at Kansas City, Kansas.
s/ Teresa J. James
Teresa J. James
United States Magistrate Judge
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?