United States District Court, S.D. Indiana, Indianapolis Division
BOSTON SCIENTIFIC CORPORATION, BOSTON SCIENTIFIC SCIMED, INC., Plaintiffs,
COOK GROUP INCORPORATED, COOK MEDICAL LLC, Defendants. COOK MEDICAL LLC, COOK GROUP INCORPORATED, Counter Claimants,
BOSTON SCIENTIFIC CORPORATION, BOSTON SCIENTIFIC SCIMED, INC., Counter Defendants.
ORDER ON MOTION TO LIFT STAY AND REOPEN CASE
J. DINSMORE JUDGE
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
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.
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.
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.]
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,
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).
Unduly Prejudice or Tactically Disadvantage
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
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.
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.
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