Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

Boston Scientific Corp. v. Cook Group Inc.

United States District Court, S.D. Indiana, Indianapolis Division

June 17, 2019

BOSTON SCIENTIFIC CORPORATION, BOSTON SCIENTIFIC SCIMED, INC., Plaintiffs,
v.
COOK GROUP INCORPORATED, COOK MEDICAL LLC, Defendants. COOK MEDICAL LLC, COOK GROUP INCORPORATED, Counter Claimants,
v.
BOSTON SCIENTIFIC CORPORATION, BOSTON SCIENTIFIC SCIMED, INC., Counter Defendants.

          ORDER ON MOTION TO LIFT STAY AND REOPEN CASE

          MARK J. DINSMORE JUDGE

         This matter is before the Court on Plaintiffs' Motion to Lift Stay and Reopen Case. [Dkt. 343.] For the reasons set forth below, Plaintiffs' Motion is DENIED.

         I. Background

         This is a patent infringement action filed by Plaintiffs Boston Scientific Corporation and Boston Scientific SciMed, Inc. in the United States District Court for the District of Delaware against Defendants/Counterclaimants Cook Group Incorporated and Cook Medical LLC.

         After Defendants' Motion to Stay Pending Inter Partes Review was denied, Defendants renewed the motion to stay this litigation pending inter partes review (“IPR”) of the patents in suit by the United States Patent & Trademark Office (“PTO”). [Dkt. 74.] The Delaware Court granted Defendants' motion on August 16, 2017. [Dkt. 304.] The case was then transferred to this Court after the Delaware Court granted Defendants' Motion to Transfer for Improper Venue on September 11, 2017. [Dkt. 316.]

         Finally, after the Patent Trial and Appeal Board (“PTAB”) issued its Final Written Decisions finding that at least one asserted claim of each of the four patents in suit remained valid, both parties appealed the IPR decisions. [Dkt. 344 at 1; Dkt. 352 at 1.] Plaintiffs then moved to lift the stay and reopen the case. [Dkt. 343.]

         II. Discussion

         The 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). In exercising this discretion, the Court must weigh the “competing interests” of the parties and attempt to “maintain an even balance.” Landis v. N. Am. Co., 299 U.S. 248, 255 (1936).

         Courts typically consider a variety of factors when deciding whether to maintain a stay. Lippert, 2014 WL 8807329, at *2. These factors include whether maintaining the stay would: (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.” Id.The court should also consider (4) whether the totality of the circumstances and the “interests of justice” favor a stay. See Universal Elecs., Inc. v. Universal Remote Control, Inc., 943 F.Supp.2d 1028, 1035 (C.D. Cal. 2013). The decision whether to grant a stay is committed to the district court's sound discretion, and the court is “given considerable leeway in the exercise of its judgment.” See, e.g., Ultratec, Inc. v. CaptionCall, LLC, 611 Fed.Appx. 720, 721-23 (Fed. Cir. 2015).

         A. Unduly Prejudice or Tactically Disadvantage

          Courts have determined that “prejudice against the non-movant is probably the most important factor to consider when determining whether a stay is appropriate.” CeraMedic LLC v. CeramTec GmbH, No. 3:14-CV-1969-JD-CAN, 2015 WL 13649465, at *2 (N.D. Ind. Mar. 13, 2015). Plaintiffs assert that Defendants are direct competitors and that “during the pendency of the stay, continued to take sales away from BSC.” [Dkt. 344 at 4.] Further, Plaintiffs stress that a continued delay will likely consume much of the remaining life of three of the patents in suit-which expire in 2021-and will prevent Plaintiffs from obtaining a permanent injunction. [Dkt. 356 at 4, 6.] Defendants argue that Plaintiffs delayed bringing suit, never filed a preliminary injunction, and that the “evidence did not establish that Cook was taking market share away from Plaintiffs.” [Dkt. 352 at 11-13.]

         In the United States District Court for the District of Delaware's Memorandum Order Granting the Motion to Stay, the court determined it was “uncontested” that Plaintiffs and Defendants are direct competitors. [Dkt. 304 at 17.] However, the court could not conclude that the parties' relationship indicated that a stay would unduly prejudice Plaintiffs. [Id. at 20.] Additionally, there was no “evidence of the erosion of ‘good will' (or reputational harm).” [Id. at 19.] Moreover, the court stated that Plaintiffs “may be adequately compensated by money damages.” [Id.] Therefore, the evidence suggested that Plaintiffs will not be unduly prejudiced because of the relationship of the parties. Further, the prejudice imposed on Plaintiffs during a continuation of the stay while the case is further simplified is not enough to justify lifting the stay.

         Courts have held that delay alone does not constitute undue prejudice. CeraMedic LLC, 2015 WL 13649465, at *2. Importantly, the possibility of being adequately compensated by money damages reduces prejudice. Id. at 4 (finding that a monetary award would fully compensate the plaintiff as a factor that weighs against prejudice). Moreover, while three of the patents in suit are set to expire in October 2021, Plaintiffs will still be able to recover damages at trial if Defendants are found liable, even with a continued stay. See VirtualAgility Inc. v. Salesforce.com, Inc., 759 F.3d 1307, 1318 (Fed. Cir. 2014) (noting “a stay will not diminish the monetary damages to which VA will be entitled if it succeeds in its infringement suit-it only delays realization of those damages and delays any potential injunctive remedy.”). Additionally, both parties are appealing the IPR decisions, which could impact the scope of the case and demonstrates that each party has an interest in the outcome on appeal.

         Plaintiffs rely on Knauf v. Manville, in which this Court lifted a stay pending IPR appeals even though the case was previously stayed. No. 1:15-cv-00111-WTL-MJD, Dkt. 114 (S.D. Ind. Oct. 12, 2017). However, this case can be distinguished from Knauf because (1) monetary damages will adequately compensate Plaintiffs in this case, and (2) the circumstances surrounding the cases are different. The fact that the Delaware Court found that monetary damages would adequately compensate Plaintiffs is significant and reduces prejudice from delay. This Court made no such finding in Knauf. The Delaware Court noted that the parties and the court “clearly devoted a significant amount of time and ...


Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.