Stryker Corporation et al v. Monster Medic, Inc.

Filing 21

OPINION ; signed by Judge Robert Holmes Bell (Judge Robert Holmes Bell, kcb)

UNITED STATES DISTRICT COURT F O R THE WESTERN DISTRICT OF MICHIGAN S O U T H E R N DIVISION

S T R Y K E R CORPORATION and S T R Y K E R SALES CORPORATION, P l a i n t if f s / C o u n t e r - D e f e n d a n t s , F ile No. 1:09-CV-1142 v. H O N . ROBERT HOLMES BELL M O N S T E R MEDIC, INC., D e f e n d a n t/C o u n te r- P l a in tif f . / OPINION T h is action for patent infringement comes before the Court on Defendant/CounterP la in tif f Monster Medic, Inc.'s motion to stay litigation pending its request for reexamination a n d during reexamination of the patent-in-suit. (Dkt. No. 12.) For the reasons that follow, th e motion to stay will be denied. I. P lain tiff s Stryker Corporation and Stryker Sales Corporation (collectively referred to as "Stryker") filed this action against Defendant Monster Medic, Inc. ("Monster Medic"), a lle g in g that Monster is infringing one or more claims of Stryker's United States Patent No. 7 ,3 9 8 ,5 7 1 ("the '571 patent") entitled "Ambulance Cot and Hydraulic Elevating Mechanism T h e re f o r." (Dkt. No. 1, Compl.) Monster Medic has filed a counterclaim alleging nonin f rin g e m e n t and invalidity of the '571 patent. (Dkt. No. 9, Counterclaim.)

O n February 19, 2010, Monster Medic filed a request with the United States Patent an d Trademark Office ("PTO") for inter partes reexamination of the '571 patent. On April 1 4 , 2010, the PTO granted Monster Medic's request for reexamination and issued its first o f f ic e action. (Dkt. No. 18, Supp. to Mot. to Stay, Ex. A, Order Granting Request for R e e x am .; Dkt. No. 19, Resp. to Supp., Ex. A, Office Action.) The PTO Examiner rejected c la im s 1, 5-9, and 11-15 of the '571 patent as unpatentable because they were anticipated by p rio r art, but confirmed claims 2-4 and 10 as patentable because the cited prior art did not teac h the subject matter of these claims. (Office Action.) Because the PTO has granted Monster Medic's request for reexamination, Monster M e d ic 's motion for a stay pending a decision on its request for reexamination has been re n d e re d moot. The reexamination, however, is not yet complete. The first office action on th e reexamination is not a final order. Stryker, as the patent owner, has an opportunity to re sp o n d to the office action, and Monster Medic will have an opportunity to comment on S tryk e r's response. (Office Action 1.) Accordingly, the Court is still required to consider M o n s te r Medic's request that the stay be continued during reexamination. In determining whether to stay litigation pending reexamination of a patent by the P T O , courts generally consider the following three factors: (1) whether a stay would unduly p re ju d ic e or present a clear tactical disadvantage to the non-moving party; (2) whether a stay w o u ld simplify the issues in question and the trial of the case; and (3) whether discovery has b e e n completed or a trial date has been set. See, e.g., Magna Donnelly Corp. v. Pilkington

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N . Am. Inc., 4:06-CV-126, 2007 WL 772891, at *2 (W.D. Mich. Mar. 12, 2007) (citing c a se s). The potential advantages of staying litigation pending reexamination of a patent in c lu d e : the narrowing or elimination of issues, the alleviation of discovery problems, th e encouragement of settlement, the benefit to the court of PTO expertise, the s im p lic ity of introducing the PTO record as evidence at trial, and the reduction o f costs for both the parties and the court. Id . These advantages, however, must be weighed against the potential prejudice of a stay. T h e parties have presented evidence that the reexamination process within the PTO itself g e n e ra lly exceeds two years, and if the stay includes appeals, the time to reach a final d e c is io n on reexamination may exceed six years. Stryker contends that delaying the litigation w ill increase the degree to which Stryker is damaged by Monster Medic's entry into the p o w e r ambulance cot marketplace with a product that infringes on Stryker's patented te c h n o lo g y. (See Dkt. No. 17, Morton Decl. ¶¶ 5-6, asserting damages in the form of lost p ro f its , lost customers, potential price erosion, and damage to its reputation). Stryker has represented that it will assert infringement of at least claims 2, 3, and 10 in this litigation. The Examiner has confirmed the validity of these claims and has explained w h y the claims are not patentable over the prior art cited by Monster Medic. It appears to th is Court that, in light of the Examiner's reasoned explanation for rejecting eleven claims a n d confirming four claims of the '571 patent, most of the benefits of a stay have already b e e n accomplished. Under these circumstances, it appears that any additional advantages 3

that would be gained by a stay pending complete resolution of the reexamination process are o u tw eigh ed by the potential prejudice caused by a stay. Accordingly, Monster Medic's m o tio n for a stay until completion of the reexamination of the '571 patent will be denied w ith o u t prejudice to renew the motion should changed circumstances suggest that the b e n e f its of a stay would outweigh the prejudice. An order consistent with this opinion will be entered.

Dated: May 20, 2010

/s/ Robert Holmes Bell ROBERT HOLMES BELL UNITED STATES DISTRICT JUDGE

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