motion to stay

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By Memorandum Order entered by The Honorable Leonard P. Stark in The Gillette Co. v. Dollar Shave Club, Inc. et al., Civil Action No. 15-1158-LPS-CJB (D.Del. August 7, 2017), the Court overruled the parties’ objections to the Memorandum Order issued on March 7, 2017 by Magistrate Judge Burke denying defendants’ motion to stay the action pending arbitration and adopted Judge Burke’s Order. Specifically, the Court overruled defendants’ objections to Judge Burke’s determinations that the Court, and not the Arbitral Tribunal, should decide the threshold issue of arbitrability and that there is a genuine issue of material fact as to whether a valid arbitration agreement exists. Id.at *1-5. The Court also overruled plaintiff’s objection to Judge Burke’s determination that, assuming there is a valid arbitration agreement, the current disputes fall within the scope of the arbitration agreement. Id.at *5-8. Lastly, the Court denied plaintiff’s motion to enjoin arbitration finding that plaintiff had failed to meet its burden to show that it was likely to succeed on the merits, that it would be irreparably harmed from the ongoing arbitration, or that the balance of harms or the public interest favored enjoining the arbitration. Id.at *8-10.

A copy of the Reacted Public Version of Memorandum Order is attached.

By Memorandum Order entered by The Honorable Leonard P. Stark in Beijing Sinotau Medical Research Co., Ltd. v. Navidea Biopharmaceuticals, Inc., et al., Civil Action No. 17-110-LPS-MPT (D.Del. March 1, 2017), the Court granted defendants’ joint motion to stay the action filed by plaintiff in the District of Delaware pursuant to the “first-filed” rule. In granting the motion, the Court explained that (1) defendant Navidea had filed an action against plaintiff Beijing Sinotau in the Southern District of Ohio the day before plaintiff Beijing Sinotau filed the instant action in the District of Delaware; and (2) both actions relate to the same Asset Purchase Agreement between Navidea and Cardinal and the same Exclusive Licensing and Distribution Agreement relating to Beijing Sinotau and Navidea. Id. at *2.

The first-filed rule provides that “in all cases of federal concurrent jurisdiction, the court which first has possession of the subject must decide it.” Id. at*1-2. The rule “encourages sound judicial administration and promotes comity among federal courts of equal rank. It gives a court the power to enjoin the subsequent prosecution of proceedings involving the same parties and the same issues already before another district court.” Id. at *2.

A copy of the Memorandum Order is attached.

By Memorandum Order entered by The Honorable Leonard P. Stark in Greatbatch Ltd. v. AVX Corp., et al., Civil Action No. 13-723-LPS (D.Del., December 10, 2015), the Court denied the motion to stay of Defendants AVX Corporation and AVX Filters Corporation pending (1) appeal of a final written decision by the Patent Trial and Appeal Board (“PTAB”) in an inter partes review (“IPR”) proceeding related to U.S. Patent No. 5,905,627 (“the ‘627 patent”) and (2) resolution of proceedings related to an application for reissue of the ‘627 patent. After evaluating and weighing the three factors the Court typically considers when deciding a motion to stay, the Court found that those factors did not favor granting the motion to stay.

A copy of the Memorandum Order is attached.

By Memorandum Order entered by The Honorable Christopher J. Burke in Kaavo Inc. v. Cognizant Technology Solutions Corp., Civil Action No. 14-1192-LPS-CJB (D.Del., April 9, 2015) (consolidated), the Court granted Defendants’ motion to stay the proceedings in the patent infringement action pending resolution of Defendants’ motions to dismiss which assert that the patent-in-suit, United States Patent No. 8,271,974 (“the ‘974 patent”), is not directed to a patent-eligible subject matter under 35 U.S.C. § 101.  In weighing the three applicable factors for evaluating a motion to stay, the Court found that simplification of the issues weighed slightly in favor of the stay, the status of the litigation (which is in its very beginning stages) weighed strongly in favor of the stay, and the undue prejudice factor weighed against the stay.  Id. at 2-11.  On balance, the Court concluded that the possibility of simplifying the issues of the case at a very early stage of the litigation was compelling enough to grant the stay under the circumstances.  Id. at 11.

A copy of the Memorandum Order is attached.

By Memorandum Order entered by The Honorable Leonard P. Stark in Walker Digital, LLC v. Google, Inc., Civil Action No. 11-318-LPS (D.Del., June 24, 2014), the Court denied defendant Google, Inc.’s (“Google”) motion to stay proceedings pending covered business method review by the Patent Trial and Appeal Board after weighing the pertinent factors and concluding that those factors disfavored granting the requested stay.

A copy of the Memorandum Order is attached.

 

By Memorandum Opinion entered by The Honorable Sue L. Robinson in Versata Software, Inc., et al. v. Callidus Software, Inc., Civil Action No. 12-931-SLR (D.Del., May 8, 2014), the Court denied defendant Callidus Software, Inc.’s motion to stay pending post-grant review of the patents-in-suit pursuant to the “covered business method” (“CBM”) patent review process provided for under the Leahy-Smith America Invents Act (“AIA”), § 18(a), 37 C.F.R. 42.300(a) with respect to two of the three patents-in-suit. In considering the motion, the Court recognized the legislative history of the CBM post-grant review process, the fact that Congress “place[d] a very heavy thumb on the scale in favor of a stay being granted,” and that the AIA “provides an immediate appeal of a denial of a stay by a district court to the United States Court of Appeals for the Federal Circuit.” Id. at 3-4. However, despite those things, the Court concluded that a complete stay, under the circumstances of the instant action, would not simplify the issues or reduce the burdens of litigation. Thus, the court denied the motion to stay as to the ‘024 and ‘304 patents and granted the stay as to the ‘326 patent.

A copy of the Memorandum Opinion is attached.

 

By Memorandum Order entered by The Honorable Christopher J. Burke in McRo, Inc. d/b/a Planet Blue v. Bethesda Softworks LLC, Civil Action No. 12-1509-LPS-CJB (D.Del., May 1, 2014) (consolidated), the Court denied Defendants’ motion to stay without prejudice to renew the motion after the United States Patent and Trademark Office decision on whether to grant Defendant Naughty Dog’s petition for inter partes reexamination of the patents-in-suit.

A copy of the Memorandum Order is attached.

By Memorandum Opinion entered by The Honorable Gregory M. Sleet in Bayer Intellectual Property GMBH, et al. v. Warner Chilcott Co., LLC, et al., Civil Action No. 12-1032-GMS (D.Del., December 9, 2013), the Court denied defendant Warner Chilcott’s motion to dismiss the claim of patent interference under 35 U.S.C. § 291 asserted against Warner Chilcott in the First Amended Complaint of Plaintiffs Bayer Intellectual Property GMBH and Bayer Pharma AG (collectively, “Bayer”).  Bayer’s First Amended Complaint asserted claims of patent infringement of U.S. Patent No. 5,980,940 (the “‘940 patent”) (Count I) and patent interference between the ‘940 patent and Warner Chilcott’s U.S. Patent No. 7,704,984 (the “‘984 patent”) (Count II).

Warner Chilcott claimed the Court lacked subject matter jurisdiction over the patent interference claim asserting that Bayer’s First Amended Complaint failed to allege the necessary priority dispute required to establish subject matter jurisdiction under 35 U.S.C. § 291. Id. at 4. The court disagreed with Warner Chilcott, found that Bayer sufficiently pled the necessary requirements for an interference claim, and concluded the court therefore had subject matter jurisdiction under 35 U.S.C. § 291.

A copy of the Memorandum Opinion is attached.

 

By Report and Recommendation entered in TruePosition, Inc. v. Poloaris Wireless, Inc., Civil Action No. 12-646-RGA/MPT (D.Del., October 21, 2013), the Honorable May Pat Thynge recommended the Court deny Defendant’s motion to stay pending inter parties review. A copy of the Report and Recommendation is attached.

 

By Order entered by Chief Judge Gregory M. Sleet in BodyMedia, Inc. v. Basis Science, Inc., Civil Action No. 12-133-GMS (D.Del., June 6, 2013), the Court granted the motion of defendant Basis Science, Inc. to stay the action pending completion of the inter partes reexamination of the patents-in-suit, U.S. Patent Nos. 7,261,690, 6,605,038, 7,689,437, 7,285,090, and 8,073,707. By the same Order, the Court denied Basis Science’s motion to transfer the action to the Northern District of California.

A copy of the Court’s Order is attached.