United States District Court, E.D. Pennsylvania
BECON MEDICAL, LTD. and HENRY STEPHENSON BYRD, M.D., Plaintiff,
SCOTT P. BARTLETT, M.D., and TALEXMEDICAL, LLC, Defendants.
patent infringement case involves two non-surgical infant ear
correction devices: plaintiffs' EarWell and
defendants' InfantEar. Plaintiffs, Becon Medical, Ltd.,
and Henry Stephenson Byrd, M.D., assert that defendants
TalexMedical, LLC, and Scott P. Bartlett, M.D., infringed on
patents related to EarWell by, inter alia, making
and selling InfantEar. There are two patents-in-suit:
plaintiffs' U.S. Patent No. 8, 167, 942
(“‘942 Patent”) and U.S. Patent No. 8, 852,
277 (“‘277 Patent”). Presently before the
Court is Defendants' Motion to Stay. For the reasons
discussed infra, the Court denies Defendants'
Motion to Stay.
have inherent power to manage their dockets and stay
proceedings.” Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1426 (Fed. Cir. 1988) (citing Landis v. N. Am.
Co., 299 U.S. 248, 254-55 (1936)). The decision whether
to grant a stay is within the Court's discretion because
“it is a matter of the court's inherent power to
conserve judicial resources by controlling its own
docket.” Cost Bros., Inc. v. Travelers Indent.
Co., 760 F.2d 58, 60 (3d Cir. 1985). This authority
extends to patent cases, where a party seeks inter
partes review (“IPR”) by the Patent and
Trial Appeal Board (“PTAB”) of the United States
Patent and Trademark Office (“USPTO”).
See Neste Oil OYJ v. Dynamic Fuels, LLC,
No. 12-cv-1744, 2013 WL 3353984, at *1 (D. Del. July 2,
2013). “The proponent of a stay bears the burden of
establishing its need.” Clinton v. Jones, 520
U.S. 681, 708 (1997).
determining whether to stay an action pending IPR,
‘courts consider the following factors: (1) whether a
stay would unduly prejudice or present a clear tactical
disadvantage to the non-moving party; (2) whether a stay will
simplify the issues in question and trial of the case; and
(3) whether discovery is complete and whether a trial date
has been set.'” Dorman Prod., Inc. v.
Paccar, Inc., No. CIV.A. 13-6383, 2014 WL 2725964, at *1
(E.D. Pa. June 16, 2014) (DuBois, J.) (quoting
Destination Maternity Corp. v. Target Corp., No.
12-cv-5680, 2014 WL 1202941, at *2 (E.D. Pa. Mar. 24, 2014)).
As discussed below, the Court concludes that all three
factors weigh against granting a stay.
Whether a Stay Would Unduly Prejudice or Present a Clear
Tactical Disadvantage to the Non-moving Party
examining whether a party will suffer undue prejudice or a
clear tactical disadvantage, courts look to four sub-factors:
(1) the timing of the request for IPR; (2) the timing of the
request for stay; (3) the status of the IPR proceedings; and
(4) the relationship of the parties. Dorman Prod.,
Inc., 2014 WL 2725964, at *1 (citing SenoRx, Inc. v.
Hologic, Inc., No. 12-cv-173, 2013 WL 144255, at *6 (D.
Del. Jan. 11, 2013)). The Court will address each sub-factor
The Timing of the Request for IPR
first sub-factor is the timing of the request for IPR. A
request for IPR “made well after the onset of
litigation followed by a subsequent request to stay may lead
to an inference that the moving party is seeking an
inappropriate tactical advantage.” Belden Techs.
Inc. v. Superior Essex Commc'ns LP, No. CIV.
08-63-SLR, 2010 WL 3522327, at *2 (D. Del. Sept. 2, 2010). In
this case, defendants were served with the Summons and
Complaint on October 10, 2018 (Document No. 4). Defendants
did not request IPR until October 9, 2019, the last possible
day before the statutory deadline. See 35 U.S.C.
§ 315(b) (requiring IPR to be instituted within one year
after the date on which petitioner “is served with a
complaint alleging infringement”). Defendants offer no
reason for filing their IPR petitions just before the
deadline-after the parties completed fact discovery, the
Court conducted a Markman hearing, and the Court
construed the disputed claim terms.
plaintiffs filed their Initial Infringement Contentions on
March 20, 2019, approximately seven months before defendants
filed for IPR. Pls.' Initial Infringement Contentions
(Document No. 31). Although “infringement contentions
are certainly not a dispositive milestone in determining
whether a defendant has pursued [IPR] in a timely manner,
” defendants do not explain the near seven-month delay
in filing for IPR after they learned of plaintiffs'
infringement contentions. Realtime Data LLC, 2016 WL
9340796, at *2.
Court finds that the timing of defendants' request for
IPR suggests that defendants are seeking an inappropriate
tactical advantage. See Parthenon Unified Memory
Architecture LLC v. HTC Corp. & HTC Am., Inc., No.
2:14-CV-00690-RSP, 2016 WL 3365855, at *2 (E.D. Tex. June 17,
2016) (finding that, inter alia, defendants'
petition for IPR filed on the last day of “the last day
of the ‘1 year' period under which Defendants were
permitted to file IPRs” suggested that defendants were
“seeking a stay to gain a tactical advantage over
[plaintiff]”); Greatbatch Ltd AVX Corp., No.
CV 13-723-LPS, 2015 WL 8483986, at *1 (D. Del. Dec. 10,
2015). Thus, this sub-factor weighs against granting a stay.
The Timing of the Request for Stay
second sub-factor is the timing of the request for a stay.
Defendants filed the instant Motion to Stay on September 19,
2019, approximately three weeks before it filed for IPR.
Notwithstanding defendants' delay in seeking IPR, the
Court concludes that this sub-factor-the timing of the
request for stay-weighs in favor of granting a stay. Cf.
Dorman Prod., Inc., 2014 WL 2725964, at *2 (concluding