E-Alert Case Updates
U.S. District Court for the District of Delaware Examines Motion to Stay Analysis
Greatbatch Ltd. v. AVX Corporation and AVX Filters Corporation
In Greatbatch Ltd. v. AVX Corporation and AVX Filters Corporation, a case involving a motion to stay an ongoing patent infringement lawsuit, the United States District Court for the District of Delaware concluded that the three (3) factors that the Court considers when deciding whether to stay litigation did not favor granting the requested stay. Accordingly, Judge Leonard P. Stark denied the motion to stay.
By way of factual background, Defendants AVX Corporation and AVX Filters Corporation ("AVX" or "Defendants") filed a motion to stay litigation of U.S. Patent No. 5,905,627 (the “’627 patent") in the United States District Court for the District of Delaware pending: (1) Defendants’ appeal of a final written decision by the Patent Trial and Appeal Board ("PTAB") in an inter partes review ("IPR") proceeding related to the '627 patent, and (2) resolution of proceedings related to Defendants’ application for reissuance of the '627 patent. The PTAB did not institute IPR with respect to claim twelve (12) of the '627 patent, the sole claim of the '627 patent currently asserted in the case pending in the District Court, having found that AVX failed to show a reasonable likelihood that claim twelve (12) was anticipated or obvious. Plaintiff Greatbatch Ltd. ("Greatbatch" or "Plaintiff') opposed Defendants’ motion to stay.
The Court began its analysis by explaining that the Court typically considers three (3) factors when deciding whether to stay litigation: "(l) whether a stay would unduly prejudice or present a clear tactical disadvantage to the non-moving party; (2) whether a stay will simplify the issues in question and trial of the case; and (3) whether discovery is complete and whether a trial date has been set." Neste Oil OYJ v. Dynamic Fuels, LLC, 2013 WL 3353984, at *1 (D. Del. July 2, 2013).
Regarding the first factor, whether a stay would unduly prejudice or present a clear tactical disadvantage to Plaintiff, the Court noted that Defendants had filed their petition for IPR on the last day permitted by statute. See 35 U.S.C. § 315(b). The Court further noted that Defendants delayed moving for a stay until after completion of discovery, after completion of the parties' briefing for summary judgment and Daubert motions, almost a year after the PTAB instituted IPR, and less than two (2) months before the pre-trial conference.
While the Court explained that delay, by itself, was insufficient to find undue prejudice (see Enhanced Sec. Research, LLC v. Cisco Sys., Inc., 2010 WL 2573925, at *3 (D. Del. June 25, 2010)), Defendants' delay in combination with the parties' status as potential business competitors persuaded the Court that this first factor weighed against a stay. In response, Defendants argued that they were no longer producing the products at issue; and thus, they were not competitors with Plaintiff. Taking the Defendants' assertion as true, the Court assigned the first factor less weight in its analysis than the other two (2) factors.
Regarding the second factor, the Court explained that whether a stay will simplify the issues relates to the issues that may be resolved by other tribunals during a stay. See Mission Abstract Data L.L.C. v. Beasley Broad. Grp., Inc., 2011WL5523315, at *2 (D. Del. Nov. 14, 2011). The Court noted that the IPR was not instituted as to claim twelve (12), and thus, any appeal from the PTAB's decision to the Federal Circuit would also not directly address claim twelve (12). See ZOLL Lifecore Corp. v. Philips Elecs. N. Am. Corp., 577 F. App'x 991, 993 (Fed. Cir. 2014) (ruling that PTAB non-institution decisions in IPR proceedings are not appealable). Defendants nevertheless argued that during its appeal of the PTAB’s decision, the Federal Circuit's analysis with respect to other claims could illuminate issues with respect to the validity of claim twelve (12). In addition, Defendants argued that claim twelve (12) could be rejected or amended during reissuance proceedings involving the '627 patent. The Court, however, was not persuaded.
The Court concluded that the second factor weighed against a stay, reasoning that the Court already had the benefit of the PTAB' s final written decision, and that any forthcoming insight regarding the validity of claim twelve (12) from the Federal Circuit or reissuance proceedings was “wholly speculative.”
Regarding the third factor, the status of discovery and whether a trial date has been set, the Court noted that discovery was complete, that the Court had already ruled on the parties' multitude of motions, that the pretrial conference was less than two (2) weeks away, and that the trial, which had been scheduled since April 2014, was set to begin in just one (1) month. Under those circumstances, the Court concluded that the third factor weighed “heavily against a stay.”
Weighing the three (3) pertinent factors, the Court concluded that they did not favor granting the requested stay. Accordingly, the Court denied Defendants’ motion to stay.
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