By Memorandum Order entered by The Honorable Sue L. Robinson in Invista North America S.A.R.L., et al. v. M&G USA Corporation, et al., Civil Action No. 11-1007-SLR (D.Del., January 14, 2015), the Court denied related motions filed by defendants M&G USA Corporation and M&G Polymers USA, LLC (collectively “M&G”) seeking to stay the action pending the completion of the reexamination process of the patent-in-suit by the United States Patent and Trademark Office (“PTO”) and seeking relief from the final judgment previously entered against M&G, which was affirmed by the Federal Circuit Court of Appeals.

In so ruling, the Court noted at the outset that it was “only because damages and willfulness were bifurcated is it possible for M&G to even posit the suggestion that it get yet another bite at the apple (its Rule 60(b) motion) or that the day of reckoning be further postponed pending completion of the reexamination process.” Id. at 2. The Court also expressed regret that the prior practice of bifurcating had led to this end. Id.

Nonetheless, the Court denied M&G’s motion to stay finding that “a stay would impose a clear tactical disadvantage to Invista, the party with a final judgment in hand obtained at great cost, given the fact that M&G has defended itself vigorously.” Id. at 3. The Court concluded that the better path is to take the litigation to its finality – meaning completing the damages phase of the litigation – so that Invista could enforce its judgment promptly. Id. at 4. The Court also denied M&G’s motion for relief from the final judgment under Federal Rule of Civil Procedure 60(b) after rejecting M&G’s claims of new evidence and the other grounds that allegedly justified relief from the final judgment. Id. at 4-6.

The lesson of this case is that, in a bifurcated case, the PTO’s grant of the request for reexamination of the patent-in-suit and rejection of patent claims after a final judgment has already been issued does not guarantee that the damages phase in the ongoing litigation will be stayed and/or relief from judgment granted.

A copy of the Memorandum Order is attached.