United States District Court, D. Delaware
BOSTON SCIENTIFIC CORPORATION and BOSTON SCIENTIFIC SCIMED, INC., Plaintiffs,
EDWARDS LIFESCIENCES CORPORATION, Defendant. EDWARDS LIFESCIENCES CORPORATION, EDWARDS LIFESCIENCES PVT, INC., and EDWARDS LIFE SCIENCES LLC, Counterclaim and Third-Party Plaintiffs,
BOSTON SCIENTIFIC CORPORATION, BOSTON SCIENTIFIC SCIMED, INC., and SADRA MEDICAL, INC., Counterclaim and Third-Party Defendants.
R. FALLON UNITED STATES JUDGE.
Wilmington this 20th day of April,
2018, the court having considered the Motion to Stay
Proceedings on the '608 Patent Pending Final Resolution
of the PTAB's Invalidation of the Asserted Claims of the
'608 Patent, filed by Edwards Lifesciences Corporation
and Edwards Lifesciences LLC (collectively,
"Edwards") (D.I. 408), and the Cross-Motion to Stay
the Spenser Patent Claims, filed by Boston Scientific Corp.,
Boston Scientific Scimed, Inc., and Sadra Medical, Inc.
(collectively, "Boston Scientific") (D.I. 424), IT
IS HEREBY ORDERED THAT Edwards' motion to stay is DENIED,
and Boston Scientific's cross-motion to stay is DENIED,
for the reasons set forth below:
Background. On April 19, 2016, Boston Scientific
filed this suit against Edwards, alleging infringement of
U.S. Patent No. 8, 992, 608 ("the '608
patent"). (D.I. 1) On June 9, 2016, Edwards filed its
answer and counterclaims for noninfringement, invalidity, and
infringement of U.S. Patent Nos. 9, 168, 133, 9, 339, 383,
and 7, 510, 575 (collectively, the "Spenser
Patents"). (D.I. 10; D.I. 301)
October 12, 2016, Edwards filed a petition for inter
partes review ("IPR") with the Patent Trial
and Appeal Board ("PTAB") regarding claims 1 to 4
of the '608 patent. The PTAB instituted IPR proceedings
on March 29, 2017. (D.I. 409 at 2)
discovery closed on June 30, 2017. (D.I. 153 at ¶ 1)
Certain fact discovery pertaining to validity of the '608
patent and damages from the alleged infringement of the
'608 patent remains ongoing. (D.I. 298) Expert discovery
was completed on December 1, 2017. (D.I. 34)
February 16, 2018, the undersigned judicial officer issued a
Report and Recommendation granting-in-part Edwards'
motion to dismiss for lack of subject matter jurisdiction,
which was based on Boston Scientific's purported lack of
ownership of the '608 patent. (D.I. 354) Edwards filed
objections to the Report and Recommendation on March 5, 2018.
March 23, 2018, the PTAB issued its Final Written Decision,
concluding that claims 1 to 4 of the '608 patent were
invalid as obvious over three different combinations of prior
art. (D.I. 403, Ex. A) The PTAB's ruling encompasses all
of the claims of the '608 patent asserted in the present
litigation. (D.I. 1 at ¶¶ 12-17) (alleging
infringement of claims 1-3 of the '608 patent). Boston
Scientific has thirty days from the issuance of the
PTAB's Final Written Decision to seek rehearing of the
Decision, 37 C.F.R. § 42.71(d)(2), or sixty-three days
from the Decision or the resolution of a request for
rehearing to file a notice of appeal with the Federal
Circuit, 37 C.F.R. § 90.3. Boston Scientific has
indicated its intention to appeal. (D.I. 425 at 2)
Briefing on the parties' summary judgment motions was
completed on April 2, 2018. (D.I. 407) There are currently
seven motions for summary judgment pending before the court.
(D.I. 302; D.I. 306; D.I. 307; D.I. 328; D.I. 335; D.I. 336;
D.I. 337) The court heard argument on the parties'
cross-motions to stay on April 17, 2018. A ten-day jury trial
is scheduled to begin on July 30, 2018. (D.I. 34)
Legal standard. A court has discretionary authority
to grant a motion to stay. 454 Life Scis. Corp. v. Ion
Torrent Sys., Inc., C.A. No. 15-595-LPS, 2016 WL
6594083, at *2 (D. Del. Nov. 7, 2016) (citing Cost Bros.,
Inc. v. Travelers Indent. Co., 760 F.2d 58, 60 (3d Cir.
1985)). Typically, courts consider three factors in deciding
how to exercise this discretion: (1) whether a stay will
simplify the issues for trial; (2) the status of the
litigation, particularly whether discovery is complete and a
trial date has been set; and (3) whether a stay would cause
the non-movant to suffer undue prejudice from any delay or
allow the movant to gain a clear tactical advantage.
Id. (citing Advanced Microscopy Inc. v. Carl
Zeiss Microscopy, LLC, C.A. No. 15-516-LPS-CJB, 2016 WL
558615, at *1 (D. Del. Feb. 11, 2016)).
Analysis. The parties' cross-motions to stay are
denied. As a preliminary matter, the court declines to grant
a partial stay, as proposed by Edwards. Rule 42(b) of the
Federal Rules of Civil Procedure provides that, "[f]or
convenience, to avoid prejudice, or to expedite and
economize, the court may order a separate trial of one or
more separate ... counterclaims ...." Fed.R.Civ.P.
42(b). When exercising its discretion to sever, the court
"consider[s] whether bifurcation will avoid prejudice,
conserve judicial resources, and enhance juror comprehension
of the issues presented in the case." SenoRx, Inc.
v. Hologic, Inc., 920 F.Supp.2d 565, 567 (D. Del. 2013).
In the present case, the court concludes that a partial stay
would subvert these interests because several unknown
variables, including the possibility that the Federal Circuit
may reverse the PTAB's decision on appeal and the
uncertainty as to whether the United States Supreme Court may
find IPR proceedings unconstitutional,  increase the
likelihood that at least two trials would be necessary to
bring the litigation to its conclusion if the court
implements a partial stay. See Life Techs. Corp. v.
Illumina, Inc., C.A. No. 09-706-RK, 2010 WL 2348737, at
*3-4 (D. Del. June 7, 2010). Moreover, partial stays are
disfavored in cases similar to the instant case, which
involve similar prior art and technology. See In re Med.
Components, Inc., 535 Fed.Appx. 916, 918 (Fed. Cir.
Simplification of issues for trial The
potential for simplification of issues for trial slightly
favors a stay. Given that the PTAB invalidated the '608
patent, an affirmance by the Federal Circuit, in whole or in
part, would affect the scope of the trial in the instant
case. However, Edwards' counterclaims based on the
Spenser patents are not the subject of IPR proceedings, and
will ultimately proceed to trial regardless of the outcome of
Boston Scientific's anticipated appeal regarding the
validity of the '608 patent. (D.I. 429 at 6)
Stage of proceedings. The second factor in
the stay analysis, regarding the stage of the proceedings,
weighs most heavily in favor of denying the stay requests.
Fact discovery ended nearly a year ago (with limited
exceptions), expert discovery and summary judgment briefing
are complete, and trial is scheduled to go forward on July
30, 2018. See Life Techs. Corp. v. Illumina, Inc.,
C.A. No. 09-706-RK, 2010 WL 2348737, at *4 (D. Del. June 7,
2010) (declining to institute a stay after substantial
discovery and the setting of a trial date); Nokia Corp.
v. Apple Inc., C.A. No. 09-791-GMS, 2011 WL 2160904, at
*1 (D. Del. June 1, 2011) (same). The Federal Circuit's
ruling on Boston Scientific's anticipated appeal will not
likely occur until after the July 30, 2017, trial date in
this matter has passed. See Personalized User Model,
L.L.P. v. Google, Inc., C.A. No. 09-525-LPS, 2012 WL
5379106, at *1 (D. Del. Oct. 31, 2012) (weighing the fact
that appeals of the reexamination proceedings would extend
beyond the trial date as a factor against a stay). To date,
the parties have expended substantial resources bringing the
litigation to this stage. While the remaining fact
depositions and trial will require an additional expenditure
of resources, staying the litigation at this late stage to
await decisions from the Supreme Court and Federal Circuit,
which may or may not alter the trajectory of the case, would
not promote the interests of justice.
Undue prejudice. In assessing whether
Boston Scientific and/or Edwards will be prejudiced by a stay
of proceedings, the court concludes that a stay, in whole or
in part, would result in prejudice to each side. (4/17/18 Tr.
at 78:7-13) For example, Boston Scientific could potentially
be prejudiced if its claims on the '608 patent were
stayed but Edwards' counterclaims were adjudicated,
particularly in the event that subsequent rulings by the
Federal Circuit or Supreme Court may overturn or nullify the
PTAB's actions on the '608 patent. Likewise, Edwards
could potentially be prejudiced by delaying the case in its
entirety. Thus, there is merit to maintaining a level playing
field if both parties, potentially, pursue injunctive relief
in the future, depending on the trial outcome. (4/17/18 Tr.
at 78:21-79:5) Overall, practical considerations lead the
court to determine that neither party is in a reasonable
position to argue that they will be prejudiced by maintaining
the status quo, keeping the case on track for trial.
Conclusion. For the foregoing reasons, Edwards'
motion to stay proceedings on the '608 patent is denied
(D.I. 408), and Boston Scientific's cross-motion to stay
proceedings on the Spenser patents is denied (D.I. 424). This
order is without prejudice to either side to renew an