United States District Court, S.D. Indiana, Indianapolis Division
BONUTTI RESEARCH, INC., JOINT ACTIVE SYSTEMS, INC., Plaintiffs,
LANTZ MEDICAL, INC., Defendant. LANTZ MEDICAL, INC., LANTZ MEDICAL, INC., Counter Claimants,
BONUTTI RESEARCH, INC., JOINT ACTIVE SYSTEMS, INC., BONUTTI RESEARCH, INC., JOINT ACTIVE SYSTEMS, INC., Counter Defendants.
ORDER ON DEFENDANT'S MOTION TO STAY
MARK J. DINSMORE, Magistrate Judge.
This matter comes before the Court on Defendant's Motion to Stay. [Dkt. 69.] For the reasons set forth below, the Court DENIES Defendant's Motion.
On April 18, 2014, Bonutti Research, Inc. and Joint Active Systems, Inc. ("Plaintiffs") sued Lantz Medical, Inc. ("Defendant"), alleging that Defendant had infringed U.S. Patents Nos. 5, 848, 979 ("the 979 patent"), 7, 955, 286 ("the 286 patent"), 7, 404, 804 ("the 804 patent"), and 7, 112, 179 ("the 179 patent"). [Dkt. 1.] On July 22, 2014, Plaintiffs amended their complaint to add an allegation that Defendant had also infringed U.S. Patent No. 8, 784, 343 ("the 343 patent"). [Dkt. 34.]
The Court entered a Case Management Plan ("CMP") on June 23, 2014, [Dkt. 28], which plan was later amended to extend various deadlines on August 15, 2014, [Dkt. 43], and on December 12, 2014. [Dkt. 62.] Discovery commenced, [ see, e.g., Dkt. 33], but on March 23, 2015, Defendant filed the currently pending motion to stay this matter pending the resolution of certain proceedings before the U.S. Patent and Trademark Office ("PTO"). [Dkt. 69.] Defendant stated that it planned to petition the PTO to initiate inter partes review ("IPR") of the 286, 804, 179, and 343 patents, and Defendant asked the Court to stay this litigation until the PTO had concluded any such review. [ Id. ] Plaintiff opposed Defendant's motion, [Dkt. 82], and the matter was fully briefed on May 11, 2015. [ See Dkt. 88.]
Courts have inherent authority and broad discretion to manage their dockets and stay proceedings. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1426 (Fed. Cir. 1988). This includes the power to stay a case pending resolution of related proceedings before the PTO. See id. The Court's discretion, however, is not unfettered. Endotach LLC v. Cook Med. Inc., No. 1:13-CV-01135-LJM, 2014 WL 852831, at *3 (S.D. Ind. Mar. 5, 2014). Thus, in considering whether to stay litigation pending resolution of an IPR, district courts should consider the following factors:
(1) whether the litigation is at an early stage; (2) whether a stay will unduly prejudice or tactically disadvantage the non-moving 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 the court.
Id. (quoting Ultratec, Inc. v. Sorenson Comm'ns, Inc., No. 13-cv-346-bbc, 2013 WL 6044407, at *2 (W.D.Wis. Nov.14, 2013)). These factors indicate that a stay in this case is not warranted.
A. Stage of the Litigation
A court is more likely to grant a stay when the case at hand is at an early stage in the litigation. See, e.g., Ho Keung Tse v. Apple Inc., No. C 06-06573 SBA, 2007 WL 2904279, at *2 (N.D. Cal. Oct. 4, 2007) ("A stay is particularly appropriate for cases in the initial stages of litigation or in which there has been little discovery."). Thus, Defendant in this case argues that little discovery has been conducted and that the parties have not taken substantial steps towards resolution of their claim construction disputes. [ See, e.g., Dkt. 69 at 4-5 ("The parties have exchanged only written discovery requests and responses. No damages-related discovery has been conducted. No depositions have been taken. JAS noticed two depositions only ten days ago. And the parties have not prepared a Joint Claim Construction Statement or filed Markman briefs. Further, the Court has not yet set a date for the Markman hearing, nor has it set dates for the close of fact discovery or trial."); see also Dkt. 84 at 1 ("Damages discovery will not take place until after the Markman hearing, which has not been set.").
Subsequent events have passed Defendant by. The parties have now submitted their Markman briefs, [Dkts. 77 & 78], and the Court has now scheduled the Markman hearing. [Dkt. 89.] In addition, the parties have moved beyond written discovery and have conducted several depositions. [ See Dkt. 82 at 3 ("Plaintiffs have deposed two of Lantz's primary fact witnesses[.]); id. ("Plaintiffs have deposed Lantz's Markman expert[.]").] Thus, even if the case was at a relatively early stage when Defendant filed its motion, the case has now moved far beyond that point.
Further, Defendant draws on this Court's decision to grant a stay in Cook Inc. v. Endologix, Inc., No. 1:09-CV-01248-WTLTAB, 2010 WL 325960 (S.D. Ind. Jan. 21, 2010). [ See Dkt. 69 at 4 ("Each of the three factors set forth in Cook ... favor granting Lantz's Motion For Stay.").] There, however, the Court had "not approved a Case Management Plan" and the parties had "not initiated discovery." 2010 WL 325960 at *2. The Court also found it significant that the defendant had requested a stay within two months of the filing of the complaint, such that the defendant had "submitted its request for a stay promptly at the outset of the litigation." Id. at *3.
Here, in contrast, the Court has already approved and then adjusted the parties' CMP, [Dkts. 28, 43 & 62], and, as noted above, the parties have already commenced discovery. Moreover, Defendant in this case waited almost eleven months from the filing of Plaintiffs' complaint before seeking a stay. [ See Dkt. 1 (April 28, 2014 Complaint); Dkt. 69 (March 23, 2015 Motion to Stay).] The facts of Cook thus have little relevance to ...