QXMedical, LLC v. Vascular Solutions, Inc.
Filing
224
ORDER. IT IS HEREBY ORDERED THAT: 1. Plaintiff's motion to continue stay and dissolve injunction 214 is GRANTED IN PART and DENIED IN PART. 2. This case is STAYED until further order of the Court. 3. The parties are directed to notify t he Court as soon as reasonably possible of the conclusion of the inter partes review process instituted on the petitions filed by Medtronic, Inc. 4. Plaintiff is enjoined from selling its infringing Boosting Catheter product in the United States until further order of the Court. (Written Opinion) Signed by Judge Patrick J. Schiltz on 7/7/2020. (CLG)
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UNITED STATES DISTRICT COURT
DISTRICT OF MINNESOTA
QXMÉDICAL, LLC,
Case No. 17‐CV‐1969 (PJS/TNL)
Plaintiff,
v.
ORDER
VASCULAR SOLUTIONS, LLC; ARROW
INTERNATIONAL LLC; TELEFLEX LIFE
SCIENCES LIMITED; and TELEFLEX LLC,
Defendants.
Courtland C. Merrill, Philip J. Kaplan, and William R. Paterson,
ANTHONY OSTLUND BAER & LOUWAGIE P.A., for plaintiff.
J. Thomas Vitt, Sanjiv P. Laud, and Emily J. Tait, JONES DAY; Kenneth E.
Levitt, DORSEY & WHITNEY, for defendants.
Plaintiff QXMédical, LLC (“QXMédical”) filed this action in June 2017, seeking a
declaration that its Boosting Catheter does not infringe any of defendants’ (collectively
“Teleflex’s”) patents and that Teleflex’s patents are invalid. Teleflex counterclaimed for
infringement, ultimately asserting claims in six patents.
This matter is before the Court on QXMédical’s motion to extend the stay of this
action and dissolve the injunction that the Court entered on December 26, 2019. ECF
No. 194. For the reasons that follow, the Court grants the motion insofar as it seeks to
extend the stay but denies the motion insofar as it seeks to dissolve the injunction.
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After issuing an order construing certain terms of the patents, ECF No. 102, and
then an order on the parties’ motions for summary judgment, ECF No. 156, the Court
scheduled trial to begin on February 24, 2020, ECF No. 157. Meanwhile, in July 2019,
Teleflex and related parties brought an infringement action against Medtronic, Inc. and
related parties (collectively “Medtronic”), asserting many of the same patent claims at
issue in this case. See Vascular Sols. LLC v. Medtronic, Inc., No. 19‐CV‐1760 (PJS/TNL).
Between November 12 and 14, 2019, Medtronic filed 13 petitions for inter partes review
(“IPR”) of a number of Teleflex’s patent claims, including six of the eight claims that
remain at issue in this case.
In December 2019, QXMédical moved to stay the trial in this action in light of the
pendency of Medtronic’s petitions. ECF No. 173. There is no dispute that, by the time
QXMédical moved to stay, QXMédical no longer had the right to petition for IPR on its
own behalf. See 35 U.S.C. § 315(b). As Teleflex put it in opposing QXMédical’s motion,
QXMédical “seeks to free‐ride and await the results of Medtronic’s IPR petitions which
present new prior art references . . . and are subject to a lower burden of proof on
invalidity.” ECF No. 186 at 8. Moreover, as trial was scheduled to begin in February
and a decision on whether to institute review on Medtronic’s petitions was not due for
six months, Teleflex was poised to obtain a final judgment before the conclusion of
Medtronic’s IPR proceedings.
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Likely in recognition of these facts, QXMédical offered a number of concessions
in order to persuade the Court to issue a stay. Among other things, QXMédical made
the following representation under penalty of perjury:
If the Court grants a stay of this case, QXMédical
agrees to suspend all sales and all offers for sales of its
accused Boosting Catheter product in the United States, and
QXMédical will only continue to manufacture the Boosting
Catheter within the United States for sales outside the
United States, until the stay of this case is lifted by the Court.
Panarello Decl. ¶ 4 [ECF No. 176]. QXMédical also offered to waive certain of its
invalidity defenses. Id. ¶ 3; ECF No. 194 at 2.
Based on these concessions, the Court found that a stay was warranted. ECF
No. 194. The Court postponed the trial and stayed the case pending the determination
of the Patent Trial and Appeal Board (“PTAB”) concerning whether to institute review
on any of Medtronic’s petitions. Id. at 3. The Court also enjoined QXMédical from
selling the Boosting Catheter in the United States until further order of the Court. Id.
Recently, the PTAB instituted review on six of Medtronic’s petitions. ECF
No. 213. These petitions cover six of the eight claims that remain at issue in this case.
Id. In light of this decision, QXMédical moves to extend the stay pending the conclusion
of the IPR process. ECF No. 214. And despite its earlier sworn agreement to suspend
all domestic sales while the stay remains in effect, QXMédical also moves to dissolve the
injunction. Id.
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The Court agrees with QXMédical that the stay should be extended. In addition
to the efficiencies to be gained by awaiting the outcome of the IPR process, the impact of
the COVID‐19 pandemic on the Court’s operations means that, as a practical matter, it
will likely be at least a year before the Court can resume lengthy civil jury trials. The
Court therefore grants QXMédical’s motion to the extent that it seeks to extend the stay
through the conclusion of the IPR process.
Given that an extension of the stay is a foregone conclusion, the only issue is
whether, in light of the extended stay, the Court should leave the injunction in place.
QXMédical argues that it would be inequitable to continue the injunction in light of
(1) the PTAB’s decision to institute review and (2) the Court’s denial of Teleflex’s
motion for a preliminary injunction in the Medtronic case. See Vascular Sols. LLC,
No. 19‐CV‐1760 (PJS/TNL), ECF No. 247; see also Movie Sys., Inc. v. MAD Mpls. Audio
Distribs., 717 F.2d 427, 430 (8th Cir. 1983) (“In modifying a preliminary injunction, a
district court is not bound by a strict standard of changed circumstances but is
authorized to make any changes in the injunction that are equitable in light of
subsequent changes in the facts or the law, or for any other good reason.”).
The Court sees no “good reason” to dissolve the injunction in this case. The
PTAB’s decision to institute review was expressly contemplated by QXMédical’s initial
motion for a stay; indeed, the whole premise of QXMédical’s argument was that trial
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should be postponed until after the PTAB addressed the validity of the claims that
Medtronic is challenging. As for the Court’s denial of Teleflex’s motion for a
preliminary injunction against Medtronic, that motion was pending and the briefing
was nearly complete at the time QXMédical sought a stay in this case. QXMédical
nevertheless chose to offer to suspend United States sales of the Boosting Catheter
during the entire duration of the stay and did not seek to condition its offer on the
outcome of the pending preliminary‐injunction motion. In refusing to modify the
injunction, therefore, the Court is doing nothing more than holding QXMédical to the
terms of the deal that it offered in order to induce the Court to order a stay.
In contrast, dissolving the injunction would be highly unfair to Teleflex. Teleflex
opposed QXMédical’s initial motion for a stay, and the Court would not have granted
that stay without the concessions that QXMédical made. Because of the COVID‐19
pandemic, the Court has no practical ability to relieve Teleflex from the consequences of
the stay. As a result, Teleflex, through no fault of its own, is facing a lengthy delay,
while QXMédical is getting precisely what it offered the concessions to get. The equities
in this situation clearly weigh in Teleflex’s favor.
Finally, QXMédical argues that its concessions are an insufficient basis on which
to continue the injunction and that Teleflex must instead establish that it is entitled to a
preliminary injunction under the traditional four‐factor test. See Dataphase Sys., Inc. v.
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CASE 0:17-cv-01969-PJS-TNL Document 224 Filed 07/07/20 Page 6 of 7
C L Sys., Inc., 640 F.2d 109, 114 (8th Cir. 1981). Having previously induced the Court to
issue a stay by offering certain concessions, however, QXMédical cannot now be heard
to argue that those same concessions are an insufficient basis for a stay. See Pegram v.
Herdrich, 530 U.S. 211, 227 n.8 (2000) (“Judicial estoppel generally prevents a party from
prevailing in one phase of a case on an argument and then relying on a contradictory
argument to prevail in another phase.”); Scudder v. Dolgencorp, LLC, 900 F.3d 1000, 1006
(8th Cir. 2018) (judicial estoppel applies when a party’s later position is clearly
inconsistent with its earlier position, the party persuaded the court to accept its earlier
position, and the party would derive an unfair advantage or impose an unfair detriment
if not estopped).
Setting that aside, the cases QXMédical cites for the proposition that the Court
may not rely on QXMédical’s concessions are distinguishable, as they involve contracts
between private parties (without any judicial involvement) rather than representations
made to a court for the very purpose of inducing judicial action. See Cambria Co. v.
Schumann, No. 19‐CV‐3145 (NEB/TNL), 2020 WL 373599, at *7 (D. Minn. Jan. 23, 2020);
Midwest Sign & Screen Printing Supply Co. v. Dalpe, 386 F. Supp. 3d 1037, 1055 (D. Minn.
2019). The Court therefore declines to dissolve the injunction.
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ORDER
Based on the foregoing, and on all of the files, records, and proceedings herein,
IT IS HEREBY ORDERED THAT:
1.
Plaintiff’s motion to continue stay and dissolve injunction [ECF No. 214] is
GRANTED IN PART and DENIED IN PART.
2.
This case is STAYED until further order of the Court.
3.
The parties are directed to notify the Court as soon as reasonably possible
of the conclusion of the inter partes review process instituted on the
petitions filed by Medtronic, Inc.
4.
Plaintiff is enjoined from selling its infringing Boosting Catheter product
in the United States until further order of the Court.
Dated: July 7, 2020
s/Patrick J. Schiltz
Patrick J. Schiltz
United States District Judge
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