Xodus Medical, Inc. et al v. Verlander

Filing 36

ORDER AND REASONS granting 21 Motion to Stay. This case is hereby STAYED and ADMINISTRATIVELY CLOSED pending the outcome of the Illinois Litigation. Signed by Judge Jane Triche Milazzo on 1/7/2022. (cwa)

Case 2:21-cv-00616-JTM-JVM Document 36 Filed 01/07/22 Page 1 of 5

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF LOUISIANA

XODUS MEDICAL, INC., ET AL.

CIVIL ACTION

VERSUS

NO. 21-616

TGV INNOVATIONS LLC

SECTION: H(1)

ORDER AND REASONS
Before the Court is Defendant TGV Innovations LLC’s Motion to Stay
(Doc. 21). For the following reasons, this Motion is GRANTED.
BACKGROUND
Plaintiffs Xodus Medical, Inc. (“Xodus”), Alessio Pigazzi, and Glenn
Keilar (collectively, “Plaintiffs”) initiated this action based on the alleged
infringement of three different patents by Defendant TGV Innovations LLC
(“TGV”).1 The Complaint alleges that TGV markets and sells a product known
as the “SurgyPad,” thereby infringing on U.S. Patent Nos. 8,511,314;

See Doc. 17. Plaintiffs initially sued Tim Verlander, manager of TGV, but later dismissed
him in place of TGV. See Docs. 1, 19.
1

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8,464,720; and 9,161,876.2 Xodus is the exclusive licensee of these patents, and
Pigazzi and Keilar are the owners.3 The SurgyPad is used to secure patients to
the medical table to reduce the risk of falling during an operation.
Almost two years before the start of this case, the same Plaintiffs filed
suit against U.S. Surgitech, Inc. (“Surgitech”), the sole manufacturer of the
SurgyPad, in the Northern District of Illinois (“the Illinois Litigation”).4 The
Illinois Litigation involves the same set of patents and the same product as
this case. The only difference between the two cases is that, here, Plaintiffs
bring suit against the seller and marketer—rather than the manufacturer—of
the SurgyPad. Now before the Court is TGV’s Motion to Stay the instant case
pending the outcome of the Illinois Litigation.5 Plaintiffs oppose this Motion.6
LAW AND ANALYSIS
TGV argues that this Court should stay this matter in accordance with
the first-to-file rule because the Illinois Litigation was filed before this suit.7
Alternatively, TGV contends that the “customer-suit exception” to the first-tofile rule mandates a stay of this case.8 Plaintiffs counter that the customer-suit

See Doc. 17, ¶¶ 18–28.
Id. ¶¶ 16–17.
4 See Xodus Medical, Inc. v. U.S. Surgitech, Inc., No. 19-cv-03164 (N.D. Ill. 2019). The Illinois
Litigation began in May of 2019, and the instant case commenced in March of 2021. See Doc.
1.
5 See Doc. 21.
6 See Doc. 28. For TGV’s reply, see Doc. 35.
7 See Doc. 21-1 at 7.
8 Id. at 7–10.
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exception does not apply to this case, and that even if it did, this Court still has
the discretion to deny the request to stay and should do so.9
“The first-to-file rule is a discretionary doctrine that may be applied
‘when related cases are pending before two federal courts.’” 10 “If there is
‘substantial overlap’ between the two cases, ‘the court in which the case was
last filed may refuse to hear it.’”11 “The first-to-file rule allows the second court
where the case was filed to stay, dismiss, or transfer the action to the first filed
court.”12 The first-to-file rule “rests on principles of comity and sound judicial
administration.”13 Its purpose is to “maximize judicial economy and minimize
embarrassing inconsistencies by prophylactically refusing to hear a case
raising issues that might substantially duplicate those raised by a case
pending in another court.”14
The first-to-file rule counsels this Court to stay the present case while
the Illinois Litigation proceeds. This is because there is substantial overlap of
issues between this case and the Illinois Litigation. The same product, patents,
and allegations—besides a change from manufacturer to seller—are at issue in
both cases. Further, principles of judicial efficiency and economy, which animate

See Doc. 28 at 1–2.
Green Tree Servicing, L.L.C. v. Clayton, 689 Fed. Appx. 363, 367 (5th Cir. 2017) (quoting
Int’l Fidelity Ins. Co. v. Sweet Little Mex. Corp., 665 F.3d 671, 677 (5th Cir. 2011)); see also
Cadle Co. v. Whataburger of Alice, Inc., 174 F.3d 599, 603 (5th Cir. 1999).
11 Id. (quoting Sweet Little Mex. Corp., at 677–78)
12 Diversified Foods & Seasonings, Inc. v. Basic Food Flavors, Inc., No. 10-4339, 2011 WL
13213833, at *1 (E.D. La. June 6, 2011) (citing W. Gulf Mar. Ass’n v. ILA Deep Sea Local 24,
751 F.2d 721, 729 n.1 (5th Cir. 1985)).
13 Cadle Co., 174 F.3d at 603.
14 Id. at 604.
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both the first-to-file rule and the customer-suit exception, weigh in favor of a
stay. The Illinois Litigation has already progressed past initial discovery, and
the parties have briefed the issue of claim construction. It would be judicially
inefficient and uneconomic to duplicate that progress in the present case.
Further, in deciding whether to issue a stay, district courts consider
several other factors, including: “(1) whether the litigation is at an early stage;
(2) whether a stay will unduly prejudice or tactically disadvantage the nonmoving party; (3) whether a stay will simplify the issues in question and
streamline the trial; and (4) whether a stay will reduce the burden of litigation
on the parties and on the court.”15 All of these factors militate in favor of a stay.
With no scheduling order entered, this case is nascent. A stay will simplify the
issues to those remaining, if any, after the Illinois Litigation terminates. It will
also reduce the burden of litigation and eliminate the risk of conflicting
holdings as to claim construction or patent validity and infringement. Lastly,
Plaintiffs argue that a stay of this case will prejudice them because the Illinois
Litigation is progressing slowly due to docket backlog and COVID-19
restrictions there. Despite what Plaintiffs might believe, this Court has not
been immune to the effects of COVID-19.16 There is no guarantee of a speedier
resolution here than in Illinois. For that reason, Plaintiff’s alleged prejudice is
unpersuasive.

Lawrence v. Jefferson Par. Pub. Defs., 20-1615, 2021 WL 6063253, at *2 & n.15 (E.D. La.
Dec. 22, 2021).
16 See COVID 19, Orders 20-1 to -14, 21-1 to -17, http://www.laed.uscourts.gov/attorneyinformation/rules-and-orders/general-orders (last accessed January 5, 2022).
15

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CONCLUSION
For the foregoing reasons, TGV’s Motion to Stay (Doc. 21) is GRANTED.
This case is hereby STAYED and ADMINISTRATIVELY CLOSED pending
the outcome of the Illinois Litigation.

New Orleans, Louisiana this 7th day of January, 2022

____________________________________
JANE TRICHE MILAZZO
UNITED STATES DISTRICT JUDGE

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