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By Report and Recommendation in Imagevision.net, Inc. v. Internet Payment Exchange, Inc., Civil Action No. 12-054-GMS-MPT (D.Del., February 25, 2013), The Honorable Mary Pat Thynge has recommended denying the motion of defendant Internet Payment Exchange to stay pending the inter partes reexamination of U.S. Patent No. 7,567,925 (“the ‘925 patent”) by the United States Patent and Trade Office (“PTO”). After analyzing the required factors, Judge Thynge concluded that (1) the relative status of the litigation and the reexamination proceedings do not weigh in favor of a stay, (2) the possible simplification of the issues for trial weighs in favor of a stay given that the PTO has preliminary rejected all claims of the ‘925 patent under the heightened reexamination standard of the America Invent’s Act (“AIA”), and (3) the balancing of the undue prejudice to plaintiff if a stay were granted against the hardship or inequity to defendant if a stay were denied weigh in favor of a stay. Id. at 5-16.

A copy of the Report and Recommendation is attached.
 

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By Memorandum Opinion entered by Chief Judge Gregory M. Sleet in Imagevision.net, Inc. v. Internet Payment Exchange, Inc., Civil Action No. 12-054-GMS-MPT, the Court adopted the ultimate recommendation of Magistrate Judge Mary Pat Thynge and denied the motion of defendant, Internet Payment Exchange, Inc. (“IPX”), requesting a stay pending the conclusion of the inter partes reexamination of the patent-in-suit by the United States Patent and Trademark Office (the “PTO”). IPX had previously filed objections to Judge Thynge’s Report and Recommendation to deny IPX’s motion to stay and, among other things, argued that an incorrect overarching legal standard was applied. Id. at 2.

In adopting Judge Thynge’s ultimate recommendation over IPX’s objections, the Court found that the statement of the applicable legal standard set forth in Judge Thynge’s Report and Recommendation is correct and not contrary to the law, the decision of whether to grant a stay is ultimately left to the court’s discretion, and the decision to deny the stay was not clearly erroneous or contrary to the law. Id. at 9.

A complete copy of the Memorandum Opinion is attached.
 

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By Memorandum Opinion entered by the Honorable Richard G. Andrews in Pragmatus Telecom, LLC v. Advanced Store Company, Inc., et al., Civil Action No. 12-088-RGA (D.Del., July 10, 2012), the Court granted the motion of the customer defendants to stay the patent infringement actions against them pending resolution of the declaratory judgment action filed against plaintiff by the supplier of the customer defendants. Finding that the declaratory judgment action would simplify the issues for trial in the patent infringement action against the customer defendants, and that plaintiff would not likely suffer any undue prejudice, the Court concluded a stay in favor of the customer defendants was warranted. See id. at 2.

A complete copy of the Opinion is attached.
 

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By Memorandum Opinion entered by the Honorable Sue L. Robinson in Helicos Biosciences Corp. v. Pacific Biosciences of California, et al., Civil Action No. 10-735-SLR (December 22, 2011), the Court denied the motion of Defendant Life Technologies Corporation (“Life”) to sever or stay the claims asserted against it in plaintiff’s complaint. In its motion to sever or stay, Life claimed that it did not commercialize the technology accused of infringement. Id. at 1-2. Life also asserted that the other defendants accused of infringement were its direct competitors and, absent any allegation that Life’s activities or products overlapped with the other defendants in any way, the claims against Life should proceed separately in order to protect Life from an expensive and potentially harmful discovery process. Id. at 2.

The Court found that an issue of fact existed as to whether Life continued to make presentations about the accused Starlight technology after February 2010 and whether such activities would constitute an infringing “offer for sale.” Id. at 3-4. Thus, in light of the commonalities in the accused technologies and the overlap of the accused patents, the Court denied Life’s motion to sever or stay the claims against it. Id. at 5.

A complete copy of the Memorandum Opinion is attached.
 

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By Memorandum Order entered by The Honorable Sue L. Robinson, in Cephalon, Inc., et al. v. Sandoz Inc., Civil Action No. 10-123-SLR, the Court granted Cephalon's motion to stay the proceedings in the instant action pending the Federal Circuit's ruling on Cephalon's appeal in the prior infringement action brought by Cephalon in the District of Delaware, at Civil Action No. 08-330, against Watson Pharmaceuticals, Inc., Watson Laboratories, Inc. and Watson Pharma, Inc. (collectively, "Watson") which asserted infringement of U.S. Patent Nos. 6,200,604 ("the '604 patent") and 6,974,590 ("the '590 patent") (collectively, "the Khankari patents") for Watson's filing of its Abbreivated New Drug Application ("ANDA") with the Food and Drug Administation ("FDA") for generic fentanyl buccal tablets. Id. at 2.

In the Watson action, following a bench trial on the issues of infringement and validity, the Court found that Cephalon failed to demonstrate infringement by Watson and also found the Khankari patents invalid for lack of enablement. Id.  Cephalon appealed the Court's ruling to the Federal Circuit.

In evaluating Cephlon's motion to stay the proceedings in the Sandoz action, the Court noted that it has broad discretionary powers with respect to a motion to stay and courts are generally guided by three factors in ruling on motions to stay:  (1) whether the granting of a stay would cause the non-moving party to suffer undue prejudice from any delay or allow the moving party to gain a clear tactical advantage over the non-moving party; (2) whether a stay will simplify the issues for trial; and (3) whether discovery is complete and a trial date set. Id. at 3-4.  After considering the factors present, the Court determined that the first two factors strongly favored the issuance of a stay in the Sandoz action and, thus, granted Cephalon's motion to stay.  Id. at 4.

A complete copy of the Court's Memorandum Order is attached hereto.  

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By Memorandum Opinion entered by The Honorable Sue L. Robinson in Boston Scientific Corporation, et al. v. Cordis Corporation, Civil Action No. 10-315-SLR, the Court denied the motion to stay filed by Defendant Cordis Corporation (“Cordis”) seeking to stay the trial scheduled to begin on May 5, 2011. In denying the motion to stay, the Court noted that motions to stay are subject to the Court's broad discretionary powers and the following three factors guide the Court in evaluating whether to grant a motion to stay: (1) whether the granting of a stay would cause the non-moving party to suffer undue prejudice from any delay or allow the moving party to gain a clear tactical advantage over the non-moving party; (2) whether a stay will simplify the issues for trial; and (3) whether discovery is complete and a trial date set. Id. at 7. After evaluating and balancing the foregoing factors, the Court concluded that granting the motion to stay was not warranted under the circumstances. Id. at 7 and 10.

A complete copy of the Court’s Opinion is attached.
 

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By Memorandum Order entered by The Honorable Leonard P. Stark in Cooper Notification, Inc. v. Twitter, Inc., et al., C.A. No. 09-865-LPS (D.Del., December 13, 2010), the Court denied the motion of defendants, Twitter, Inc., Everbridge, Inc., Rave Wireless, Inc. and Federal Signal Corp., to stay the patent infringement action pending resolution of the inter partes reexamination proceeding that defendants initiated in the United States Patent and Trademark Office (“USPTO”) concerning the patent at issue based on four prior art references.

In denying the motion, the Court recognized that the decision of whether or not to stay litigation pending a USPTO reexamination proceeding is a matter left to the Court’s discretion. Id. at 2. Typically, in deciding how to exercise its discretion of whether to grant a stay of litigation, the Court noted that it considers three factors: (1) whether a stay will simplify the issues and trial of the case; (2) whether discovery is complete and a trial date has been set; and (3) whether a stay would unduly prejudice or present a clear tactical disadvantage to the non-moving party. Id. at 2-3. Moreover, the Court noted that “a showing of hardship or inequity is ‘generally’ needed to show that the balance of equities favors a stay,” although it is not an absolute requirement. Id. at 4 (citing Court’s prior decision in St. Clair Intellectual Property Consultants, Inc. v. Fujifilm Holding Corp., 2009 WL 192457 (D.Del., January 27, 2009)).

Ultimately, after evaluating the factors, the Court concluded that a stay of the litigation in this action was not appropriate because, among other reasons, granting a stay would unduly prejudice plaintiff and provide defendants a clear, and unwarranted, tactical advantage. Id. at 5-9. Accordingly, the Court denied defendants’ motion to stay. Id. at 9.

A complete copy of the Memorandum Order is attached.
 

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By Memorandum Order entered by The Honorable Mary Pat Thynge in Masimo Corporation v. Philips Electronics North America Corporation, et al., Civil Action No. 09-80-LPS-MPT (October 6, 2010), the Court denied defendants’ motion to bifurcate the issues of liability and damages with respect to the parties’ infringement claims and to stay discovery on the issue of patent damages until liability is resolved. Id. at 13. In denying the motion, the Court concluded that, although defendants maintained that an order to bifurcate and stay discovery on patent damages would conserve resources and further judicial efficiency in the event the jury found non-infringement or patent invalidity, the possibility of resource conversation is outweighed by the duplicate resources that would be required due to the overlap of evidence in plaintiff’s patent liability and patent damages case, by defendants’ failure to establish a greater probability in prevailing on their infringement defense than plaintiff prevailing on its claims, and by the likelihood of undue prejudice against plaintiff in the event of further bifurcation. Id. at 12-13.

A complete copy of the Memorandum Order is attached.
 

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In Life Technologies Corporation, et al. v. Illumina, Inc., et al., Civil Action No. 09-706-RK (D.Del., June 7, 2010), the Court , by opinion entered by Senior Judge Robert F. Kelly, denied plaintiff Life Tech's motion to stay defendants' patent counterclaims pending re-examination of defendants' patents-in-suit by the United States Patent and Trademark Office ("USPTO").  In support of their motion, plaintiffs asserted that the re-examinations by the USPTO would likely to result in cancellation or changes of the asserted patent claims, that a stay would streamline issues in the action and promote judicial economy, and proceeding with Life Tech's invalidity case against defendant Illumina's patents in this action could be contradictory to the result of the re-examination of those patents by the USPTO.  Id. at 2-4.  Defendants countered by asserting that the delay in the re-examination process will be much longer than plaintiff suggests, the subject matter underlying plaintiffs and defendants infringement and invalidity claims are related, plaintiffs and defendants are direct competitors in the technology, and that it would be highly unlikely that proceeding in this action could produce a contradictory result in the re-examination proceeding before the USPTO because of the mandates of 35 U.S.C. § 317(b).  Id.

In denying plaintiffs' motion to stay, the Court reasoned that, although the re-examinations before the USPTO have the potential for simplifying the issues pertaining to the counterclaim patents in the case, the potential benefit would be at the expense of placing the counterclaim on hold for years while the plaintiffs' case continues.  Id. at 5.  Also, the patents in plaintiffs' case and the patents in defendants' counterclaim overlap at least to a certain extent and ,when one further considers that the claims at issue involve parties who are in direct competition, the potential for irreparable harm caused by a stay of the counterclaim far outweighs the possibility of simplifying some of the claims at issue.  Id. at 5-6.  Further, it is highly unlikely that a contradictory result could be reached in this Court and the USPTO in its re-examination proceeding because 35 U.S.C. § 317(b), which is applicable to inter-partes re-examinations, mandates that, if the Court proceeds in this action and Life Tech fails to prove that Illumina's patent claims are invalid, that result would be binding in the re-examinations.  Id. at 4.  Thus, the Court denied plaintiffs' motion to stay the counterclaim action.

A complete copy of the opinion is attached. 

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