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Endotach LLC v. Cook Medical Inc.

United States District Court, Southern District of Indiana, Indianapolis Division

March 5, 2014

ENDOTACH LLC, Plaintiff,
v.
COOK MEDICAL INCORPORATED, Defendant.

AMENDED ORDER ON DEFENDANT’S MOTION TO STAY

LARRY J. McKINNEY, JUDGE

Defendant Cook Medical Incorporated (“Cook”) has moved to stay this patent infringement suit brought by Plaintiff Endotach LLC pending inter partes review (“IPR”) of one of the patents-in-suit, U.S. Patent No. 5, 593, 417 (the “’417 patent”), by a third party.[1] Dkt. No. 79. For the following reasons, the Court DENIES Cook’s Motion to Stay.

I. BACKGROUND

A. PROCEDURAL HISTORY

A brief review of the procedural history of this case is warranted. On June 21, 2012, Endotach filed suit against Cook in Florida alleging that several of Cook’s endovascular graft products infringed U.S. Patent No. 5, 122, 154 (the “’154 patent”) and the ‘417 patent (collectively, the “patents-in-suit”). See Endotach LLC v. Cook Medical Inc., Cause No. 1:12-cv-01630-LJM-DKL (“Endotach I”), Dkt. No. 1. Endotach asserted that it had an exclusive license to the patents-in-suit through a licensing agreement with the inventor’s widow. Id. ¶ 11. Endotach I was transferred to this Court on November 8, 2012. Id. Dkt. No. 51. On November 14, 2012, this Court adopted the Florida court’s deadlines for claim construction briefs, set a date for a claim construction hearing and directed further proceedings. Id. Dkt. No. 52. On February 13, 2013, a Case Management Plan was entered by this Court, which set aggressive deadlines for discovery and dispositive motions and a trial date in October 2014. Id. Dkt. No. 89.

On April 13, 2013, after a hearing on claim construction, the Court entered its Order on Claim Construction for all of the disputed claims of both the '154 and the '417 patents. Id. Dkt. No. 102. Shortly thereafter and pursuant to the parties' request, the Court re-set the Jury Trial to an early date in June 2014. Id. Dkt. No. 107.

On June 28, 2013, Cook filed a Motion to Dismiss for Lack of Jurisdiction: No Standing ("MTD 1") alleging that at the time it filed suit, Endotach did not have an exclusive license to the patents-in-suit. Id. Dkt. No. 124. While MTD 1 was pending, on July 16, 2013, Endotach filed the instant suit in "an abundance of caution . . . . " Endotach LLC v. Cook Medical Inc., Cause No. 1:13-cv-1135-LJM-DKL, Dkt. No. 1, ¶ 13 (hereinafter, "Endotach II"). In addition, on July 23, 2013, Cook filed a Motion to Dismiss Duplicative Lawsuit in Endotach II ("MTD-Duplicative Suit"). Id. Dkt. No. 12.

On August 6, 2013, the Court granted Cooks MTD 1 without prejudice in Endotach I. Endotach I, Dkt. No. 158.

On August 22, 2013, the Court denied Cook's MTD-Duplicative Suit and concluded that "the most expeditious manner in which to end this litigation is to resolve the parties' claims and defenses on the merits, capitalizing on the work that was done in Endotach I, rather than throwing it out and starting over." Endotach II, Dkt. No. 35, at 5.

Shortly thereafter, the Court issued an Order to Show Cause why the Court's previous rulings in Endotach I should not apply in Endotach II. Id. Dkt. No. 36.

On October 1, 2013, the Court held a Status Conference in this matter to discuss case management issues. Id. Dkt. No. 49. At the Status Conference, Cook advised the Court that Cook had learned of potential IPR proceedings regarding the patents-in-suit in a case Endotach had filed in the Northern District of California against Medtronic, Inc. and Medtronic Vascular, Inc. (collectively, "Medtronic, " the lawsuit pending in California, the "Medtronic suit"). Id. Dkt. No. 75, Tr. Oct. 1, 2013, Status Conf., at 2-3. Endotach expressed doubt about any IPR being filed. Id. at 4.

Having received no substantial objections to its Order to Show Cause, see Id . Dkt. Nos. 40, 41, 49 & 51, on October 2, 2013, the Court issued a Case Management Plan. Id. Dkt. no. 50. Again, the Court set aggressive deadlines for discovery and dispositive motions, expecting the parties to capitalize on the work they had done in Endotach I, and set a Jury Trial to begin on September 15, 2014. Id.

On October 23, 2013, Cook filed another Motion to Dismiss for Lack of Jurisdiction: No Standing ("MTD 2") in which Cook argued that a third-party entity, Johnson & Johnson Interventional Systems, had a superior property interest in the patents-in-suit to that of Endotach. Id. Dkt. No. 67.

On October 31, 2013, Medtronic filed a petition for IPR, but only as to the '417 patent because the '154 patent was no longer at issue in ...


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