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Becon Medical, Ltd. v. Bartlett

United States District Court, E.D. Pennsylvania

December 17, 2019

BECON MEDICAL, LTD. and HENRY STEPHENSON BYRD, M.D., Plaintiff,
v.
SCOTT P. BARTLETT, M.D., and TALEXMEDICAL, LLC, Defendants.

          MEMORANDUM

          DuBois, J.

         I. INTRODUCTION

         This 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.[1] For the reasons discussed infra, the Court denies Defendants' Motion to Stay.

         II. ANALYSIS

         “Courts 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).

         “In 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.

         A. Whether a Stay Would Unduly Prejudice or Present a Clear Tactical Disadvantage to the Non-moving Party

         In 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 in turn.

         1. The Timing of the Request for IPR

         The 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.[2]

         Additionally, 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.

         The 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.

         2. The Timing of the Request for Stay

         The 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 ...


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