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DermaFocus LLC v. Ulthera Inc.

United States District Court, D. Delaware

October 19, 2018

DERMAFOCUS LLC, Plaintiff,
v.
ULTHERA, INC., Defendant.

          MEMORANDUM ORDER

          Maryellen Noreika, United States District Judge.

         At 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:

         I. Background

         1. On 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).

         2. On 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).

         3. On 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).

         4. The 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.).

         5. On 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. (Id.).

         6. On 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 (2018).

         7. 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. (D.I. 53).

         8. On 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. (D.I. 54).

         9. On September 17, 2018, the PTAB issued an updated Final Written Decision upholding the validity of the two remanded claims. (D.I. 56, Ex. 1).

         10. On September 18, 2018, Ulthera appealed the PTAB decision to the Federal Circuit and filed its appeal brief earlier than ...


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