Case 8:17-cv-00981-JVS-JCG Document 57-19 Filed 02/26/18 Page 1 of 6 Page ID
` #:1572
`
`Exhibit R
`
`

`

`Case 8:17-cv-00981-JVS-JCG Document 57-19 Filed 02/26/18 Page 2 of 6 Page ID
` #:1573
`
`JS-6
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`SOUTHERN DIVISION
`
`Case No.: SACV 16-00730-CJC(GJSx)
`
`ORDER GRANTING DEFENDANT’S
`MOTION TO STAY CASE PENDING
`INTER PARTES REVIEW
`
`))
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`BOSTON SCIENTIFIC CORP., ET
`AL.,
`
`Plaintiffs,
`
`
`
`v.
`
`EDWARDS LIFESCIENCES CORP.,
`
`Defendant.
`
`I. INTRODUCTION AND BACKGROUND
`
`Plaintiffs Boston Scientific Corporation and Boston Scientific Scimed, Inc.
`(together, “Boston”), initiated this action against Defendant Edwards Lifesciences
`Corporation (“Edwards”) on April 19, 2016, alleging patent infringement of the
`following patents: (1) U.S. Patent No. 8,709,062 (“the ‘062 Patent”); (2) U.S. Patent No.
`6,203,558 (“the ‘558 Patent”); (3) U.S. Patent No. 6,371,962 (“the ‘962 Patent”); (4) U.S.
`
`-1-
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Exhibit R, Page 568
`
`

`

`Case 8:17-cv-00981-JVS-JCG Document 57-19 Filed 02/26/18 Page 3 of 6 Page ID
` #:1574
`
`Patent No. 7,749,234 (“the ‘234 Patent”); (5) U.S. Patent No. 7,828,767 (“the ‘767
`Patent”); (6) U.S. Patent No. 6,007,543 (“the ‘543 Patent”); (7) U.S. Patent No.
`6,712,827 (“the ‘827 Patent”); and (8) U.S. Patent No. 6,915,560 (“the ‘560 Patent”).
`These eight patents protect certain products used in Boston’s transcatheter aortic valve
`implantation (TAVI) device. (Dkt. 64 [Defendant’s Memorandum in Support of Motion
`to Stay, hereinafter “Def.’s Mem.”] at 2–3.) A TAVI device is a medical device that can
`deliver a replacement heart valve into a patient without open heart surgery. (Id.)
`Edwards brought counterclaims against Boston seeking, inter alia, a declaration that the
`patents at issue are invalid. (Dkt. 49.)
`
`Edwards has filed petitions for inter partes review (“IPR”) of the eight patents at
`issue here. An IPR is an expedited proceeding for review of patent claims by the United
`States Patent and Trademark Office (“PTO”). See 35 U.S.C. §§ 311 et seq. Anyone who
`is not the patent owner may petition for IPR to cancel one or more claims of a patent. Id.
`§ 311(b). If the PTO decides to grant a petition, the PTO begins, or “institutes,” IPR of
`the patent. Id. § 311(a). Once a petition is instituted, the PTO must conclude IPR within
`one year, with a possible six-month extension for good cause. Id. § 316(a)(11).
`
`On June 29, 2017, the PTO instituted IPR on one of the eight patents that Edwards
`is alleged to have infringed in this lawsuit. (Def.’s Mem. at 5.) The PTO will decide
`whether to institute on the remaining seven patents by November 9, 2017. (Id. at 6–7.)
`
`Before the Court is Edwards’ motion to stay this case pending the PTO’s IPR
`determinations. (Dkt. 63.) For the following reasons, the motion is GRANTED.1
`
`1 Having read and considered the papers presented by the parties, the Court finds this matter appropriate
`for disposition without a hearing. See Fed. R. Civ. P. 78; Local Rule 7-15. Accordingly, the hearing set
`for September 11, 2017 at 1:30 p.m. is hereby vacated and off calendar.
`-2-
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Exhibit R, Page 569
`
`

`

`Case 8:17-cv-00981-JVS-JCG Document 57-19 Filed 02/26/18 Page 4 of 6 Page ID
`
` #:1575
`
`II. LEGAL STANDARD
`
`
`District courts have the inherent power to manage their dockets and stay
`proceedings. Landis v. N. Am. Co., 299 U.S. 248, 254–55 (1936). This inherent power
`includes “the authority to order a stay pending conclusion of a PTO reexamination.”
`Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988). The party seeking a stay
`bears the burden of showing that a stay is warranted. Landis, 299 U.S. at 255.
`
`In determining whether a stay pending patent reexamination is appropriate, courts
`
`generally consider three factors: “(1) whether discovery is complete and whether a trial
`date has been set; (2) whether a stay will simplify the issues in question and trial of the
`case; and (3) whether a stay would unduly prejudice or present a clear tactical
`disadvantage to the nonmoving party.” Universal Elecs., Inc. v. Universal Remote
`Control, Inc., 943 F. Supp. 2d 1028, 1030–31 (C.D. Cal. 2013). Ultimately, however,
`“the totality of the circumstances governs.” Id. at 1031.
`
`III. DISCUSSION
`
`The Court finds that a stay in this case is warranted under the totality of the
`
`circumstances. The first factor weighs in favor of a stay because the Court has not yet
`expended substantial time and effort preparing for trial in this case. Universal Elecs.,
`Inc., 943 F. Supp. 2d at 1031 (“The Court’s expenditure of resources is an important
`factor in evaluating the stage of the proceedings.”). While a trial date has been set and
`this case has been pending for seventeen months, the parties have only filed one
`dispositive motion: an unopposed motion to dismiss. (Dkts. 31, 33, 34.) The Court has
`not otherwise engaged with the substantive merits of the case, such as deciding on a
`motion for summary judgment or construing the patent claims at issue. While discovery
`has been underway for several months, it is not expected to be complete until late
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`-3-
`
`Exhibit R, Page 570
`
`

`

`Case 8:17-cv-00981-JVS-JCG Document 57-19 Filed 02/26/18 Page 5 of 6 Page ID
`
` #:1576
`
`February 2018, which is over five months from now. (Dkt. 44 [Order Granting
`Stipulation on Scheduling Deadlines].) Given the significant amount of time and
`resources the parties and the Court are expected to spend from now until trial, a stay at
`this stage is appropriate. Pragmatus AV, LLC v. Facebook, Inc., No. 11-CV-02168-EJD,
`2011 WL 4802958, at *3 (N.D. Cal. Oct. 11, 2011) (“When, as here, there has been no
`material progress in the litigation, courts in this district strongly favor granting stays
`pending inter partes reexamination.”) (emphasis added).
`
`The second factor also weighs in favor of a stay. The PTO has already instituted
`
`IPR of one of the patents at issue, and may institute review of the other seven patents. If
`the PTO amends or invalidates any of these patents, the issues in this litigation must be
`amended accordingly. Moving forward with litigation and trial before the PTO issues its
`decisions risks the parties and the Court spending resources on issues that may ultimately
`become moot. On the other hand, waiting for the PTO’s final determinations “could
`eliminate the need for trial if the claims are cancelled or, if the claims survive, facilitate
`trial by providing the court with expert opinion of the PTO and clarifying the scope of the
`claims.” Target Therapeutics, Inc. v. SciMed Life Sys., Inc., No. C-94-20775 RPA, 1995
`WL 20470, at *2 (N.D. Cal. Jan. 13, 1995). Although it is not certain what the PTO will
`do, the prudent course of action is to wait for the PTO’s determinations before
`proceeding with additional discovery, motions, and trial.
`
`Finally, a stay will not unduly prejudice Boston. The only form of prejudice
`
`Boston claims it will experience is delay in reaching summary judgment and trial. (Dkt.
`79 [Plaintiff’s Opposition, hereinafter “Opp.”] at 16.) But “[d]elay is a feature common
`to all stayed cases, and mere delay in the litigation does not establish undue prejudice.”
`Aten Int’l Co., Ltd v. Emine Tech. Co., No. SACV09-0843AGMLGX, 2010 WL
`1462110, at *7 (C.D. Cal. Apr. 12, 2010). Further, Boston is seeking only monetary
`damages in this case, (Def.’s Mem. at 14), so it will be sufficiently compensated for any
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`-4-
`
`Exhibit R, Page 571
`
`

`

`Case 8:17-cv-00981-JVS-JCG Document 57-19 Filed 02/26/18 Page 6 of 6 Page ID
` #:1577
`
`delay with monetary relief. Evolutionary Intelligence, LLC v. LivingSocial, Inc., No. 13-
`CV-04205-WHO, 2014 WL 213179, at *2 (N.D. Cal. Jan. 17, 2014).
`
`Boston asserts that the Court should not reward Edwards’ delay tactics by granting
`a stay. (Opp. at 16–20.) But the Court does not see evidence of unreasonable or dilatory
`tactics. Edwards filed its first IPR petition within two months of Boston serving its
`infringement contentions, and ultimately filed a total of ten IPR petitions in eight months.
`(Def.’s Mem. at 5.) Further, Edwards filed all of its IPR petitions within the one-year
`statutory limit. (Dkt. 83 [Reply] at 8.) These facts do not support a finding of undue
`prejudice. SAGE Electrochromics, Inc. v. View, Inc., No. 12-CV-06441-JST, 2015 WL
`66415, at *4 (N.D. Cal. Jan. 5, 2015) (finding no undue prejudice where defendants filed
`IPR petitions within the statutory deadline and within six months of being served
`plaintiff’s infringement contentions.)
`
`IV. CONCLUSION
`
`For the foregoing reasons, Defendant’s motion to stay this case pending patent
`examination before the PTO is GRANTED. This action is STAYED. The parties are
`DIRECTED to notify the Court regarding IPR status 125 days from the date of this
`Order. The parties are also DIRECTED to notify the Court upon resolution of all the IPR
`petitions at issue.
`
`DATED:
`
`September 8, 2017
`
`__________________________________
`CORMAC J. CARNEY
`UNITED STATES DISTRICT JUDGE
`
`-5-
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Exhibit R, Page 572
`
`