United States District Court, D. Delaware
R. FALLON UNITED SPATES MAGISTRATE JUDGE.
Wilmington this 7th day of June
2018, the court having considered the Motion to Lift
Stay, filed by DermaFocus LLC ("DermaFocus") (D.I.
48), IT IS HEREBY ORDERED THAT DermaFocus' Motion to Lift
Stay is DENIED for the reasons set forth below:
29, 2015, DermaFocus filed this suit against Ulthera, Inc.
("Ulthera") alleging infringement of U.S. Patent
No. 6, 113, 559 ("the '559 Patent"), entitled
"Method and Apparatus for Therapeutic Treatment of Skin
Without Ultrasound." (D.I. 11 at ¶ 1)
July 19, 2016 Ulthera filed a petition for inter
partes review ("IPR") with the Patent Trial
and Appeal Board ("PTAB") regarding all claims of
the '559 Patent. (D.I. 36 at 1)
November 11, 2016, while the IPR petition was pending,
DermaFocus and Ulthera entered into a stipulation to stay the
instant litigation until the PTAB's final resolution of
the IPR proceedings. (D.I. 36)
PTAB instituted IPR proceedings on January 23, 2017 for
claims one through four, six through nine, and eleven through
eighteen of the '559 patent. (D.I. 49, Ex. 5 at 2) The
PTAB did not institute IPR proceedings with respect to claims
5 and 10 of the '559 patent. (Id. at 12, 17-18)
January 19, 2018, the PTAB issued its final decision,
concluding that Ulthera did not show any of the challenged
claims were unpatentable. (D.I. 49, Ex. 1 at 1, 37) Ulthera
appealed the PTAB's decision to the Federal Circuit.
(D.I. 50, Ex. 1)
February 16, 2018, DermaFocus moved to lift the stay in
accordance with the terms of the November 11, 2016
stipulation. (D.I. 48) Ulthera opposed the motion to lift the
stay and requested a continuation of the stay until
resolution of the appeal before the Federal Circuit. (D.I.
Following the filing of the motion to lift the stay, on April
24, 2018, the Supreme Court issued its ruling in SAS
Institute, Inc. v. Iancu, which held that the PTAB must
issue a final written decision addressing every patent claim
challenged in an IPR petition. 138 S.Ct. 1348 (2018).
8. As a
result of the Supreme Court's decision, Ulthera filed a
motion before the Federal Circuit requesting remand of
Ulthera's appeal to the PTAB for issuance of a final
decision regarding the patentability of claims 5 and 10.
(D.I. 53 at 1)
May 25, 2018, the Federal Circuit granted Ulthera's
motion and "directed [the PTAB] to promptly issue a
final decision as to all claims challenged by Ulthera in its
petition." (D.I. 52, Ex. 1 at 3)
court has inherent, discretionary authority to grant a motion
to stay, and may lift the stay if circumstances warranting
the entry of a stay in the first instance have changed.
Elm 3DS Innovations LLC v. Samsung Elecs. Co., C.A.
No. 14-1430-LPS-CJB, C.A. No. 14-1431-LPS-CJB, 2018 WL
1061370, at *1 (D. Del. Feb. 26, 2018) (citing Cost
Bros., Inc. v. Travelers Indem. Co.,760 F.2d 58, 60-61
(3d Cir. 1985); Princeton Dig. Image Corp. v. Konami Dig.
Entm't Inc, 12-1461-LPS-CJB, 2015 WL 219019, at *2
(D. Del. Jan. 14, 2015)). Courts within this district
generally use three factors in determining whether to lift
stay: "(1) whether granting the stay will simplify the
issues for trial; (2) the status of 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 ...