Case 1:17-cv-00770-JDW Document 442 Filed 08/07/24 Page 1 of 5 PageID #: 40678
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`WIRTGEN AMERICA, INC.,
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`Plaintiff,
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`v.
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`Case No. 1:17-cv-00770-JDW
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`ORDER
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`AND NOW, this 7th day of August, 2024, upon consideration of Wirtgen America,
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`CATERPILLAR, INC.,
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`Defendant.
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`Inc.’s Motion To Stay Proceedings Regarding U.S. Patent No. 7,523,995 (D.I. 436), I note
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`as follows.
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`1.
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`“Motions to stay invoke the broad discretionary powers of the court.” Bos.
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`Sci. Corp. v. Cordis Corp., 777 F. Supp. 2d 783, 788 (D. Del. 2011). “[A] court is under no
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`obligation to delay its own proceedings by yielding to ongoing PTO patent
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`reexaminations, regardless of their relevancy to infringement claims which the court must
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`analyze.” Fresenius Med. Care Holdings, Inc. v. Baxter Int'l, Inc., No. C 03-1431 SBA, 2007
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`WL 1655625, at *3 (N.D. Cal. June 7, 2007); see also Viskase Corp. v. Am. Nat. Can Co., 261
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`F.3d 1316, 1328 (Fed. Cir. 2001).
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`2.
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`For stays based on ex parte reexaminations, courts consider “(1) whether
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`granting the stay will simplify the issues for trial; (2) the status of the litigation, particularly
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`
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`
`
`
`WIRTGEN AMERICA, INC.,
`
`
`
`
`Plaintiff,
`
`
`
`v.
`
`
`
`
`
`Case No. 1:17-cv-00770-JDW
`
`
`
`
`
`
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`ORDER
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`AND NOW, this 7th day of August, 2024, upon consideration of Wirtgen America,
`
`
`CATERPILLAR, INC.,
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`
`
`
`
`
`Defendant.
`
`Inc.’s Motion To Stay Proceedings Regarding U.S. Patent No. 7,523,995 (D.I. 436), I note
`
`as follows.
`
`1.
`
`“Motions to stay invoke the broad discretionary powers of the court.” Bos.
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`Sci. Corp. v. Cordis Corp., 777 F. Supp. 2d 783, 788 (D. Del. 2011). “[A] court is under no
`
`obligation to delay its own proceedings by yielding to ongoing PTO patent
`
`reexaminations, regardless of their relevancy to infringement claims which the court must
`
`analyze.” Fresenius Med. Care Holdings, Inc. v. Baxter Int'l, Inc., No. C 03-1431 SBA, 2007
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`WL 1655625, at *3 (N.D. Cal. June 7, 2007); see also Viskase Corp. v. Am. Nat. Can Co., 261
`
`F.3d 1316, 1328 (Fed. Cir. 2001).
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`2.
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`For stays based on ex parte reexaminations, courts consider “(1) whether
`
`granting the stay will simplify the issues for trial; (2) the status of the litigation, particularly
`
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`Case 1:17-cv-00770-JDW Document 442 Filed 08/07/24 Page 2 of 5 PageID #: 40679
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`whether discovery is complete and a trial date has been set; and (3) whether a stay would
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`cause the non-movant to suffer undue prejudice from any delay, or allow the movant to
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`gain a clear tactical advantage.” Brit. Telecommunications PLC v. IAC/InterActiveCorp, No.
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`CV 18-366-WCB, 2020 WL 5517283, at *2 (D. Del. Sept. 11, 2020).
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`3.
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`On July 2, 2024, the USPTO granted ex parte reexamination on claims 16,
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`43, 45-63 of U.S. Patent No. 7,523,995 (the “‘995 Patent”). This accounts for 21 of the 22
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`claims at issue in this litigation. Now Wirtgen requests to stay this litigation with respect
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`to the ‘995 Patent.
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`4.
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`Simplification: “The most important factor bearing on whether to grant a
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`stay is whether the stay is likely to simplify the issues at trial.” Id. at *9. The EPR pertains
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`to only one of Caterpillar’s two asserted patents; it will not affect the claims and issues in
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`this case pertaining to U.S. Patent No. 9,975,538 Patent (the “’538 Patent”). When a
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`reexamination applies to all claims asserted in litigation, the PTO’s decision will necessarily
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`streamline litigation. See id. at *9 (collecting cases). By contrast, in this case, a stay would
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`not accomplish that desired result. The parties would complete supplemental discovery,
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`serve expert reports, file dispositive motions, and proceed to trial on the ‘538 Patent. (See
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`D.I. 412.) And there would still be at least one claim from the ‘995 Patent, so the Parties
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`would have to repeat that process yet again after the EPR proceedings. To promote
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`judicial economy, it is far more efficient to proceed with both patents in tandem.
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`Case 1:17-cv-00770-JDW Document 442 Filed 08/07/24 Page 3 of 5 PageID #: 40680
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`5.
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`The EPR proceedings also will not estop Wirtgen from raising in this case
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`arguments it advances in the EPR. See Longhorn HD LLC. v. NetScout Sys., Inc., No. 2:20-
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`CV-00349-JRG, 2022 WL 71652, at *3 n.5 (E.D. Tex. Jan. 6, 2022). This weighs against a
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`stay. KIPB LLC v. Samsung Elecs. Co., No. 219CV00056JRGRSP, 2019 WL 6173365, at *2
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`(E.D. Tex. Nov. 20, 2019).
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`6.
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`Relying on USPTO statistics, Wirtgen argues that the claims at issue in this
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`case now are likely to be cancelled or changed after the conclusion of the ex parte
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`reexamination. But this is not a foregone conclusion. As Caterpillar argues, those statistics
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`may be subject to debate. Further, Wirtgen has been unsuccessful in two prior IPR
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`challenges of the claims at-issue in the ‘995 EPR. Given this context, it’s premature for me
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`to speculate on the result of the EPR. See id.
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`7.
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`Status of Litigation: Generally, when discovery is in its infancy, this factor
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`weighs against a stay. Foras Techs. Ltd. v. Bayerische Motoren Werke AG, No. 6:23-CV-
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`386-RP, 2024 WL 1724256, at *2 (W.D. Tex. Apr. 22, 2024) (collecting cases). Discovery
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`based on the ‘995 Patent is ongoing. The Parties are completing supplemental fact
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`discovery and in the process of drafting expert reports. While the case is not on the eve
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`of trial, I note that Wirtgen filed its case way back in 2017. Caterpillar asserted these
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`patents against Wirtgen in 2021. The Parties then stipulated to stay proceedings on the
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`’995 Patent until the conclusion of IPR proceedings. The age of this case counsels in favor
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`of continuing its progression.
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`Case 1:17-cv-00770-JDW Document 442 Filed 08/07/24 Page 4 of 5 PageID #: 40681
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`8.
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`Prejudice: In reviewing whether a stay would prejudice Caterpillar, I may
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`consider “(1) the timing of the request for review; (2) the timing of the request for stay;
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`(3) the status of the review proceedings; and (4) the relationship of the parties.” Contour
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`IP Holding, LLC v. GoPro, Inc., No. CV 15-1108-LPS-CJB, 2016 WL 4474340, at *4 (D. Del.
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`July 14, 2016).
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`9.
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`As to the status of the review proceedings, the EPR could last two years. The
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`‘995 Patent is set to expire in 2026. Staying the case pending the result of the EPR might
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`deprive Caterpillar of its opportunity to seek the injunctive relief against Wirtgen that it
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`first sought in 2021. Other courts have recognized the near-expiration of a patent term as
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`a “legitimate concern” in this context. Corteva Agriscience LLC v. Monsanto Co., No. CV
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`22-1046-GBW, 2023 WL 3119968, at *2 (D. Del. Apr. 27, 2023); see generally Slip Track
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`Sys., Inc. v. Metal Lite, Inc., 159 F.3d 1337, 1340 (Fed. Cir. 1998).
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`10.
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`For the relationship of the parties, “[c]ourts are reluctant to stay proceedings
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`where the parties are direct competitors.” Cooper Notification, Inc. v. Twitter, Inc., No. CIV.
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`09-865-LPS, 2010 WL 5149351, at *5 (D. Del. Dec. 13, 2010). With direct competitors, harm
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`may “go beyond calculable money damages, including more permanent loss of
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`marketshare and goodwill.” Avanos Med. Sales, LLC v. Medtronic Sofamor Danek USA,
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`Inc., No. 219CV02754JMPTMP, 2020 WL 7865959, at *2 (W.D. Tenn. Nov. 24, 2020).
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`Wirtgen and Caterpillar compete in the road milling machine market against only a few
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`Case 1:17-cv-00770-JDW Document 442 Filed 08/07/24 Page 5 of 5 PageID #: 40682
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`other competitors. Caterpillar has demonstrated that it would suffer prejudice if the case
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`was stayed pending resolution of the ‘995 EPR.
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`11.
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`I do not find that Wirtgen was dilatory in the timing of the request for review
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`or its request for a stay. Nevertheless, the stay would unduly prejudice Caterpillar. As a
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`result, this factor weights against a stay.
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`12.
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`Because a stay would not significantly simplify the issues in this litigation
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`and Caterpillar would suffer prejudice, staying the proceedings is inappropriate.
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`Therefore, it is ORDERED that the Motion To Stay Proceedings Regarding U.S.
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`Patent No. 7,523,995 (D.I. 436) is DENIED.
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`BY THE COURT:
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`/s/ Joshua D. Wolson
`JOSHUA D. WOLSON, J.
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