United States District Court, N.D. Indiana, South Bend Division
OPINION AND ORDER
Michael G. Gotsch, Sr. United States Magistrate Judge
March 16, 2017, Plaintiff Puget BioVentures filed its Motion
to Lift Stay, entered in this case in December of 2010.
Defendant DePuy Orthopaedics, Inc. (“DePuy”)
timely filed its response on April 3, 2017. This motion
became ripe for ruling when Plaintiff filed its reply brief
on April 12, 2017.
its complaint, filed in the Northern District of Illinois on
April 5, 2010, Plaintiff alleges that DePuy infringed its
patent, U.S. Patent No. 7, 344, 541 (“'541
patent”). In July of 2010, Plaintiff filed a
separate complaint against Biomet Orthopaedics, LLC
(“Biomet”) in the Northern District of Illinois
alleging infringement of the same '541 patent. On
November 4, 2010, both cases were transferred to this Court.
In October of 2010, before the November transfer, Biomet
filed a petition for inter partes reexamination
(“IPR”) of the '541 patent with the Patent
and Trademark Office (“PTO”). Since then, the
stay has been extended by agreement on multiple occasions
throughout a protracted IPR process that has yet to conclude.
Until now, the parties had agreed that the case should be
stayed until the conclusion of the IPR process. However, the
IPR process has been lengthier than either party anticipated
at the time the stay was imposed.
Biomet filed its IPR petition, the PTO Examiner rejected all
of the claims in the '541 patent in the first Office
Action in the IPR process. In response to the rejections,
Plaintiff filed amendments to claims 1, 5, 6, 9, 10, 21-26,
35-38, and 49-52, rather than filling an immediate
appeal. Furthermore, Plaintiff rewrote the
remaining claims from dependent claims into independent
claims. Despite Plaintiff's amendments and rewrites, the
Examiner again rejected all of the claims. The Examiner then
closed prosecution of the patent, to which Plaintiff
responded with further amendments of the '541
patent's claims on September 29, 2011. The Examiner filed
a Right of Appeal Notice indicating the amendments made after
the close of prosecution were not entered in the patent.
then appealed to the Patent Trial and Appeal Board
(“the Board”), which reversed the Examiner's
findings in part. Specifically, the Board reversed the
Examiner's decision to reject each of the unamended
claims. However, the Board affirmed the Examiner's
decision to reject each of the amended claims. Plaintiff then
filed a request for rehearing, which the Board granted. Upon
rehearing, the Board maintained its decision to reverse the
Examiner's rejection of the unamended claims, but also
decided to reverse the Examiner's rejection of the
amended claims. Of particular note, the Board reversed the
Examiner's decision to reject amended claims 31 and 45,
which remain at issue in this litigation.
then appealed to the Court of Appeals for the Federal Circuit
and sought to have the Board's decision regarding both
the amended and unamended claims reversed. However,
Plaintiff's '541 patent expired on December 24, 2015,
before the Court of Appeals came to its decision.
Consequently, the Court of Appeals vacated the Board's
decision regarding the amended claims because “the PTO
does not enter amendments made in IPR after the expiration of
the patent.” Biomet Orthopaedics, LLC v. Puget
Bioventures, LLC, 640 F. App'x 868, 870 (Fed. Cir.
2016). The Court further held that the expiration of the
patent prevented the amendments from issuing, as amendments
cannot issue until the certificate issues, which cannot
happen after a patent expires. Id. The Court
declined to consider the original form of the amended claims
because the Board had not considered the original forms.
Lastly, the Court of Appeals upheld the Board's
confirmation of the unamended claims, and remanded the case
to the Board for further consideration of what the
appropriate action was in this unusual set of facts.
remand, the Board remanded the case to the Examiner for
further consideration in light of the Court of Appeals
decision. Plaintiff then filed an amendment that cancelled
all of the prior amendments to the claims, including
amendments to claims 31 and 45. This new amendment reverted
each of the prior amended claims to their original forms that
had all been previously denied by the Examiner. Biomet
opposed this amendment, but the Examiner entered it and the
amended claims reverted back to their unamended forms. The
Examiner then confirmed the patentability of each of the
now-unamended claims on March 3, 2017. The Examiner closed
prosecution and the next Office Action will be a Right of
Appeal Notice, which will give Biomet an opportunity to
further appeal the case to the Board and possibly to the
Federal Circuit. The parties agree that appeals may not be
exhausted for as long as three more years.
on the original Plaintiff's assignment of the '541
patent, the Court substituted Puget BioVentures, LLC as the
plaintiff February 1, 2017. [DE 104]. Upon the party
substitution, new counsel began prosecuting this action on
behalf of Plaintiff. On March 16, 2017, Plaintiff and DePuy
filed a status report stating that the parties no longer
agreed on continuing the stay following the Office Action on
March 3, 2017. Accordingly, Plaintiff filed this motion to
lift the almost seven-year-old stay in this case and the
instant Motion to Lift Stay. DePuy opposes this motion, and
this Court faces the issue of whether to continue the stay
pending the appeal(s) Biomet will likely file, or to lift the
stay and move this case forward.
Court has “the inherent power to manage its own docket
and may use its authority to stay proceedings pending
conclusion of a PTO re-examination of a patent.”
Lippert Components Mfg. v. Al-Ko Kober, LLC, No.
3:13-cv-697-JVB-CAN, 2014 WL 8807329, at *2 (N.D. Ind. Jan.
16, 2014). However, a stay should not “be indefinite or
otherwise excessive.” Lincoln Int'l Life Ins.
Co. v. Transamerica Fin. Life. Ins. Co., No.
1:08-cv-135-JVB-RBC, 2009 WL 1108822, at *2 (N.D. Ind. Apr.
24, 2009). Indeed, Fed. R. Civ. P. 1
requires the parties and the Court “to secure the just,
speedy, and inexpensive determination of every action and
proceeding.” Fed. R. Civ. P. 1.
typically consider four factor when deciding whether to
maintain a stay pending an IPR. Lippert, 2014 WL
8807329, at *2; Universal Elecs., Inc. v. Universal
Remote Control, Inc., 943 F.Supp.2d 1028, 1035 (N.D.
Cal. 2013). The party seeking to maintain the stay has the
burden of proof to show whether the stay will: (1) unduly
prejudice or tactically disadvantage the party opposing the
stay; (2) simplify the issues in the litigation and
streamline trial; and (3) “reduce the burden of
litigation on parties and the court;” and (4) whether
the totality of the circumstances and the “interests of
justice” favor a stay. Lippert, 2014 WL
8807329, at *2; Universal Elecs., 943 F.Supp.2d at
1035. The factor that holds the most weight in this
analysis is the first factor of undue prejudice on the party
opposing the stay. Lippert, 2014 WL 8807329, at *2.
stated above, a decision on whether to lift the stay and
allow this case to proceed or to continue the stay until the
IPR is finalized requires an analysis of the four
aforementioned factors. The Court will examine each of the
factors in turn.