United States District Court, D. Delaware
Maryellen Noreika, United States District Judge.
Wilmington this 19th day of October 2018, the
Court having considered Plaintiff DermaFocus LLC's
Renewed Motion to Lift Stay (D.I. 56), IT IS HEREBY ORDERED
THAT DermaFocus LLC's Motion is GRANTED for the reasons
set forth below:
July 29, 2015, DermaFocus LLC ("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. 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 1 through 4, 6 through 9, and 11 through 18 of the
'559 patent. (D.I. 54 at ¶ 4). The PTAB did not
institute IPR proceedings with respect to claims 5 and 10 of
the '559 patent. (Id.).
January 19, 2018, the PTAB issued its final decision,
concluding that Ulthera did not show any of the challenged
claims were unpatentable. (Id. at ¶ 5). Ulthera
appealed the PTAB's decision to the Federal Circuit.
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.
50). 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
Based on 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.
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). Thereafter, on June 7,
2018, this Court denied Plaintiffs motion to lift the stay.
September 17, 2018, the PTAB issued an updated Final Written
Decision upholding the validity of the two remanded claims.
(D.I. 56, Ex. 1).
September 18, 2018, Ulthera appealed the PTAB decision to the
Federal Circuit and filed its appeal brief earlier than