Case 1:20-cv-00925-JFB-SRF Document 61 Filed 01/22/21 Page 1 of 23 PageID #: 1385
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`HOLOGIC, INC., a Delaware corporation; and
`CYTYC SURGICAL PRODUCTS, LLC, a
`Massachusetts limited liability company,
`
`C.A. No. 20-925-JFB-SRF
`
`Plaintiffs,
`
`v.
`
`MINERVA SURGICAL, INC., a Delaware
`corporation,
`
`DEFENDANT MINERVA SURGICAL, INC.’S OPENING BRIEF IN SUPPORT OF
`MOTION FOR STAY
`
`Ian R. Liston (#5507)
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`222 Delaware Avenue, Suite 800
`Wilmington, DE 19801
`(302) 304-7600
`iliston@wsgr.com
`
`Counsel for Defendant Minerva Surgical,
`Inc.
`
`Of Counsel:
`
`Vera M. Elson
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`650 Page Mill Road
`Palo Alto, CA 94304
`(650) 493-9300
`velson@wsgr.com
`
`Edward G. Poplawski
`Olivia M. Kim
`Erik J. Carlson
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`633 West Fifth Street, 15th Floor
`Los Angeles, CA 90071
`(323) 210-2900
`epoplawski@wsgr.com
`okim@wsgr.com
`ecarlson@wsgr.com
`Dated: January 22, 2021
`
`

`

`Case 1:20-cv-00925-JFB-SRF Document 61 Filed 01/22/21 Page 2 of 23 PageID #: 1386
`
`TABLE OF CONTENTS
`
`I.
`II.
`III.
`IV.
`
`INTRODUCTION .............................................................................................................. 1
`NATURE AND STAGE OF THE PROCEEDINGS ......................................................... 2
`SUMMARY OF ARGUMENT .......................................................................................... 2
`STATEMENT OF FACTS ................................................................................................. 4
`
`A.
`
`B.
`
`C.
`
`D.
`
`District Court Litigation in the First Action ........................................................... 4
`
`Appeal to the Federal Circuit in the First Action .................................................... 5
`
`Supreme Court Review of Assignor Estoppel in the First Action .......................... 6
`
`Status of the Present Action .................................................................................... 8
`
`Potential Impact on the Present Action ................................................................... 8
`E.
`ARGUMENT ...................................................................................................................... 9
`
`V.
`
`A.
`
`A Stay Pending Minerva’s Appeal in the First Action is Likely to Simplify the
`Issues for Trial ...................................................................................................... 10
`
`1.
`
`2.
`
`The Appeal May Impact the Scope of This Case ..................................... 10
`
`Hologic’s Argument That Minerva’s Appeal is Futile is Incorrect. ......... 12
`
`B.
`
`C.
`
`The Stage of Litigation Favors a Stay................................................................... 13
`
`A Stay Will Not Unduly Prejudice Hologic or Present a Clear Tactical Advantage
`for Minerva ........................................................................................................... 15
`
`3.
`
`4.
`
`5.
`
`The Timing of Minerva’s Request for Certiorari Favors a Stay ............... 16
`
`The Timing of the Request for Stay Favors a Stay ................................... 16
`
`The Status of Minerva’s Appeal to the Supreme Court Favors a Stay ..... 17
`
`The Relationship of the Parties Does Not Create Undue Prejudice .......... 17
`6.
`CONCLUSION ................................................................................................................. 18
`
`VI.
`
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`

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`Case 1:20-cv-00925-JFB-SRF Document 61 Filed 01/22/21 Page 3 of 23 PageID #: 1387
`
`TABLE OF AUTHORITIES
`
`Cases
`
` page(s)
`
`454 Life Scis. Corp. v. Ion Torrent Sys., Inc.,
`No. CV 15-595-LPS, 2016 WL 6594083 (D. Del. Nov. 7, 2016) ...........................................17
`
`Bechtel Corp. v. Laborers’ Int’l Union,
`544 F.2d 1207 (3d Cir. 1976).....................................................................................................9
`
`BodyMedia, Inc. v. Basis Sci., Inc.,
`No. 12-133-GMS, 2013 WL 2462105 (D. Del. June 6, 2013) ................................................15
`
`Bonutti Skeletal Innovations, L.L.C. v. Zimmer Holdings, Inc.,
`No. 12-CV-1107 (GMS), 2014 WL 1369721 (D. Del. Apr. 7, 2014) ...............................16, 17
`
`Butamax(TM) Advanced Biofuels LLC v. Gevo, Inc.,
`No. 11-54-SLR, 2014 U.S. Dist. LEXIS 200342 (D. Del. July 11, 2014) ....................9, 10, 13
`
`CallWave Commc’ns, LLC v. AT & T Mobility, LLC,
`No. 12-1701-RGA, 2015 WL 1284203 (D. Del. Mar. 18, 2015) ............................................14
`
`Celorio v. On Demand Books LLC,
`C.A. No. 12-821-GMS, 2013 WL 4506411 (D. Del. Aug. 21, 2013) ...............................15, 18
`
`Contour IP Holding, LLC v. GoPro, Inc.,
`C.A. No. 15-1108LPS-CJB, 2016 WL 4474340 (D. Del. July 14, 2016) .........................13, 16
`
`Ethicon LLC v. Intuitive Surgical, Inc.,
`No. 17-871-LPS, 2019 WL 1276029 (D. Del. Mar. 20, 2019) ..........................................14, 18
`
`First Am. Title Ins. Co. v. Maclaren, LLC,
`No. 10-cv-363 (GMS), 2012 WL 769601 (D. Del. Mar. 9, 2012) .......................................9, 14
`
`Found. Med., Inc. v. Guardant Health, Inc.,
`No. 17-807-LPS-CJB, 2018 WL 950261 (D. Del. Feb. 15, 2018) ..........................................10
`
`Franklin v. Navient Corp.,
`C.A. No. 17-1640-RGA, 2020 U.S. Dist. LEXIS 57039 (D. Del. Apr. 1, 2020) ..............12, 14
`
`Hologic, Inc. v. Minerva Surgical, Inc.,
`325 F. Supp. 3d 507 (D. Del. 2018) ...........................................................................................5
`
`Hologic, Inc. v. Minerva Surgical, Inc.,
`957 F.3d 1256 (Fed. Cir. 2020)........................................................................................5, 6, 12
`
`Landis v. N. Am. Co.,
`299 U.S. 248 (1936) ...................................................................................................................9
`
`- ii -
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`

`

`Case 1:20-cv-00925-JFB-SRF Document 61 Filed 01/22/21 Page 4 of 23 PageID #: 1388
`
`Neste Oil Oyj v. Dynamic Fuels, LLC,
`C. A. No. 12-662-GMS, 2013 WL 424754 (Jan. 31, 2013).....................................................15
`
`Novartis AG v. HEC Pharm Co.,
`183 F. Supp. 3d 560 (D. Del. 2016) (Stark, J.) ........................................................................11
`
`Peschke Map Techs., LLC v. J.J. Gumberg Co.,
`40 F. Supp. 3d 393 (D. Del. 2014) (Robinson, J.) ...............................................................9, 14
`
`Princeton Dig. Image Corp. v. Konami Dig. Entm’t Inc.,
`No. 10-389-LPS, 2014 WL 3819458 (D. Del. Jan. 15, 2014) .................................................16
`
`Softview LLC v. Apple Inc.,
`No. 12-989-LPS, 2013 WL 4757831 (D. Del. Sept. 4, 2013) ...........................................10, 11
`
`Toshiba Samsung Storage Tech. Korea Corp. v. LG Elecs., Inc.,
`193 F. Supp. 3d 345 (D. Del. 2016) .........................................................................................18
`
`UCB, Inc. v. Hetero USA Inc.,
`277 F. Supp. 3d 687 (D. Del. 2017) .........................................................................................10
`
`VirtualAgility Inc. v. Salesforce.com, Inc.,
`759 F.3d 1307 (Fed. Cir. 2014)................................................................................................17
`
`Statutes
`
`35 U.S.C. §§ 102, 103 ................................................................................................................9, 11
`
`35 U.S.C. § 112 ...................................................................................................................... passim
`
`35 U.S.C. § 282(b) ...........................................................................................................................6
`
`Rules
`
`Fed. R. Civ. P. 16 .............................................................................................................................8
`
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`

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`
`I.
`
`INTRODUCTION
`
`Defendant Minerva Surgical, Inc. (“Minerva”) respectfully asks the Court to stay this
`
`matter pending exhaustion of the appeals in Hologic, Inc. et al. v. Minerva Surgical, Inc., Civ. No.
`
`15-1031 (D. Del.) (the “First Action”). Minerva brings this motion because on January 8, 2021,
`
`the Supreme Court of the United States granted Minerva’s Petition for Certiorari (“Petition”) and
`
`agreed to review the application of assignor estoppel in the First Action. On January 11, 2021, the
`
`Supreme Court also denied Plaintiffs Hologic, Inc. and Cytyc Surgical Products, LLC’s
`
`(collectively “Hologic’s”) Cross-Petition for Certiorari filed in the First Action. Notably, thirty-
`
`one eminent intellectual property law school professors filed an amicus brief in support of
`
`Minerva’s Petition asking the Supreme Court to either do away with, or at least significantly
`
`narrow, the doctrine of assignor estoppel.
`
`The First Action involves the same parties and the same patent at issue in this case. Since
`
`the fundamental issue of whether assignor estoppel applies to prevent Minerva from challenging
`
`the validity of the same patent will be reviewed this term by the Supreme Court, the question of
`
`whether the patent is valid, or whether Minerva can raise invalidity defenses in the present case,
`
`remains unresolved. Therefore, an interim stay of this case pending resolution of the appeal is
`
`appropriate so that the parties and the Court can have certainty as to the scope of this case. Also,
`
`even though trial is set for August 23, 2021, the case remains at a relatively early stage. The parties
`
`have yet to complete expert discovery, file motions for summary judgment, or begin pretrial
`
`activities. It makes consummate sense to grant a stay at this time and thereby allow the appeal in
`
`the First Action to finally resolve before proceeding in this case on the same patent.
`
`Moreover, a stay will not unduly prejudice Hologic or provide Minerva with a clear tactical
`
`advantage. The patent at issue expired over two years ago on November 19, 2018. Thus, Hologic
`
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`cannot pursue an injunction, but only money damages for less than five months of sales before its
`
`patent expired, which eliminates the possibility of any undue prejudice. Finally, Minerva was
`
`diligent both in seeking Supreme Court review by filing its Petition several months before the
`
`deadline to do so, and in requesting this stay. Accordingly, Minerva respectfully moves the Court
`
`to exercise its inherent authority to stay this case in the interests of judicial and litigant efficiency.
`
`II.
`
`NATURE AND STAGE OF THE PROCEEDINGS
`
`On July 8, 2020, Hologic filed this action against Minerva alleging infringement of a single
`
`patent, U.S. Patent No. 9,095,348 (“the ’348 patent”). D.I. 1. Hologic is pursuing damages on
`
`Minerva’s Endometrial Ablation System with a redesigned handpiece (“Redesigned Minerva
`
`EAS”), which was sold for less than five months before the ’348 patent expired on November 19,
`
`2018. D.I. 1 ¶¶ 35, 61. The Scheduling Order in this case set December 30, 2020 as the close of
`
`fact discovery. D.I. 20 ¶ 2. Minerva has taken a deposition of one Hologic witness and the
`
`depositions of four Minerva witnesses are currently scheduled for mid-February 2021. Hologic
`
`served its opening expert reports on January 18, 2021. Responsive Expert Reports are not due
`
`until February 8, 2021, with Reply Expert Reports due February 22, 2021. Id. ¶ 2.h.i-iii. Expert
`
`discovery closes in about six weeks on March 8, 2021 (id. ¶ 2.h.v.), and dispositive motions are
`
`due in two months on March 22, 2021 (id. ¶ 11).1 Trial is set to begin on August 23, 2021. D.I.
`
`20 ¶ 16.
`
`III.
`
`SUMMARY OF ARGUMENT
`
`All three factors the Court considers in addressing a motion to stay strongly favor a stay.
`
`1 Hologic sought leave to file an early summary judgment motion on October 30, 2020 (D.I. 24)
`and Minerva opposed on November 13, 2020 (D.I. 28). The Court has not yet ruled on Hologic’s
`request for leave to file an early summary judgment motion.
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`First, a stay will simplify the issues in this case. If Minerva’s appeal in the First Action is
`
`successful and independent claim 1 of the ’348 patent is held invalid, that claim will have to be
`
`dropped in this case. Moreover, any guidance emanating from the appeal in the First Action could
`
`also be dispositive of whether the three remaining asserted dependent claims in this case are also
`
`invalid. Under this scenario, if a stay is not issued at this time, the Court and the parties could
`
`potentially proceed all the way through dispositive motion practice and trial, only to find that yet
`
`another proceeding is required to determine issues of invalidity—all for the sake of less than five
`
`months’ worth of accused sales back in 2018. This would be highly wasteful of the Court’s and
`
`at least Minerva’s resources.
`
`Even if Minerva’s appeal were only partially successful, the Supreme Court’s decision on
`
`whether assignor estoppel applies, and any subsequent decision by the Federal Circuit on remand
`
`in the First Action, would impact whether and to what extent, Minerva can challenge the validity
`
`of the asserted claims of the ’348 patent in this case. Under this scenario, if a stay is not issued,
`
`the parties may need to re-do depositions of some of the same fact and expert witnesses, generate
`
`expert reports on the issue of invalidity, and file additional dispositive motions. Moreover, any
`
`guidance from the Supreme Court and/or the Federal Circuit may need to be considered in shaping
`
`the contours of what validity challenges can be brought. Accordingly, with at least four fact
`
`depositions yet to taken, two rounds of expert reports, dispositive motions and trial still looming,
`
`a stay will prevent unnecessary expenditure of resources by both the Court and the parties until it
`
`is known if the patent is valid, and if so, what issues of validity might still be in the case.
`
`Second, this case is still at a relatively early stage, although significant expenses will be
`
`incurred as the case proceeds closer to trial. This early stage favors a stay. At least four fact
`
`depositions remain to be taken, expert discovery remains to be completed, there has been no
`
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`discovery on any issue of validity, and dispositive motions are two months away—followed by
`
`the pre-trial and trial proceedings. Moreover, the Court’s Scheduling Order contemplated a grant
`
`of Minerva’s Petition. At the time the Court set the schedule, Minerva had informed the Court
`
`that it would shortly be filing its Petition with the Supreme Court earlier than required. D.I. 13 at
`
`5. Therefore, the Court’s Scheduling Order expressly provides that Minerva’s initial invalidity
`
`contentions are due “thirty (30) days after all appeals from the First Action are exhausted.” D.I.
`
`20 ¶ 2.b.v. However, with the recent grant of Minerva’s Petition, there is a distinct possibility that
`
`all the appeals may not yet be exhausted by the current deadlines for summary judgment and trial.
`
`Ergo, Minerva’s request for a stay.
`
`Third, a stay will not unduly prejudice Hologic or provide Minerva with a clear tactical
`
`advantage. Minerva diligently pursued its appeal in the First Action and seeks this stay promptly
`
`following the Supreme Court grant of certiorari. Hologic cannot seek injunctive relief in this case
`
`because the only asserted patent expired more than two years ago. Thus, monetary damages can
`
`adequately compensate Hologic. Hologic can only seeks past damages for less than five months
`
`of sales of the accused product. Any delay in litigation resulting from a stay alone does not
`
`constitute undue prejudice, and therefore there is no tactical disadvantage to Hologic by imposing
`
`a stay in this case.
`
`IV.
`
`STATEMENT OF FACTS
`
`A.
`
`District Court Litigation in the First Action
`
`This is not the first patent case Hologic has brought against Minerva involving the ’348
`
`patent. On November 6, 2015, Hologic filed a complaint initially asserting three patents against
`
`Minerva, one of which was the ’348 patent. First Action, D.I. 1. The accused product in the First
`
`Action was Minerva’s Endometrial Ablation System (“Original Minerva EAS”). On June 28,
`
`2018, the Court issued its Memorandum Opinion on the parties’ summary judgment and Daubert
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`motions. Hologic, Inc. v. Minerva Surgical, Inc., 325 F. Supp. 3d 507 (D. Del. 2018). At the time
`
`of that opinion, claim 1 was the only asserted claim of the ’348 patent that remained at issue. Id.
`
`at 513. In granting summary judgment of no invalidity as to that claim, the Court concluded that
`
`assignor estoppel barred Minerva’s Section 112 invalidity defenses (insufficient written
`
`description and lack of enablement). Id. at 524-27. The Court also granted Hologic’s motion for
`
`summary judgment of infringement of claim 1 of the ’348 patent. Id. at 529-32.
`
`The trial on willfulness and damages proceeded in July of 2018. The jury found that
`
`Minerva had not willfully infringed the ’348 patent and awarded damages for the two patents that
`
`remained at issue. First Action, D.I. 499 at 1-2. About four months later, on November 19, 2018,
`
`the ’348 patent expired. Hologic, 957 F.3d at 1263. The Court entered Final Judgment on June 3,
`
`2019. First Action, D.I. 621.2
`
`B.
`
`Appeal to the Federal Circuit in the First Action
`
`Both parties appealed the Judgment in the First Action to the Federal Circuit. Hologic, Inc.
`
`v. Minerva Surgical, Inc., 957 F.3d 1256, 1264 (Fed. Cir. 2020). On the issue of invalidity,
`
`Minerva appealed the merits of its Section 112 invalidity defenses and whether assignor estoppel
`
`prevented them. Ex. 1 (Minerva's Appellate Brief) at 56-70. The Federal Circuit affirmed,
`
`concluding that applying assignor estoppel was not an abuse of discretion. However, the Federal
`
`Circuit did not reach the merits of Minerva’s Section 112 invalidity defenses. Hologic, 957 F.3d
`
`at 1267-269. The Federal Circuit made clear that its reason for affirming the District Court’s
`
`2 The Court stayed execution of the judgment in the First Action pending final resolution of appeals
`to the Federal Circuit. First Action, D.I. 633. After the Federal Circuit’s mandate issued, the Court
`agreed with Minerva that the stay should extend through “the filing and resolution of a petition for
`a writ of certiorari in the Supreme Court.” First Action, D.I. 646 at 2.
`
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`summary judgment ruling of no invalidity was based on assignor estoppel, not the merits of
`
`Minerva’s Section 112 defenses:
`
`Because the district court did not abuse its discretion in applying
`the doctrine of assignor estoppel, we affirm the district court’s grant
`of summary judgment of no invalidity as to claim 1 of the ’348
`patent.
`
`Id. at 1269.3 Both parties filed petitions for rehearing en banc, which the Federal Circuit denied
`
`on July 22, 2020. Ex. 2 (Federal Circuit Order on Petitions for Rehearing En Banc) at 2.
`
`C.
`
`Supreme Court Review of Assignor Estoppel in the First Action
`
`Minerva filed its Petition to the Supreme Court on September 30, 2020—nearly three
`
`months before the December 21, 2020 deadline. Ex. 3 (SCOTUS Docket Sheet for No. 20-440)
`
`at 1; see 03/19/20 Supreme Court Order (deadline to file a petition for a writ of certiorari extended
`
`to 150 days from the date of the lower court judgment). Minerva’s Petition presents a question for
`
`review by the Supreme Court regarding assignor estoppel:
`
`In the Patent Act, Congress established that invalidity is a “defense[]
`in any action involving the validity or infringement of a patent.” 35
`U.S.C. § 282(b) (emphasis added). There is no textual exception to
`this command. The Federal Circuit nonetheless applies a judge-
`made “equitable” exception to the statute’s unqualified language
`known as “assignor estoppel.” Assignor estoppel prevents an
`inventor who has assigned a patent from later contesting the patent’s
`validity.
`
`The question is whether a defendant in a patent infringement action
`who assigned the patent, or is in privity with an assignor of the
`patent, may have a defense of invalidity heard on the merits.
`
`Ex 4 at (i). Specifically, Minerva’s Petition challenges the application of assignor estoppel to
`
`preclude Minerva’s invalidity defenses for the ’348 patent (Ex. 4 at 10-12), the one and only patent
`
`Hologic asserts in this case.
`
`3 All emphasis added unless indicated otherwise.
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`Minerva’s Petition garnered the attention of multiple amici curiae. A brief from thirty-one
`
`eminent intellectual property law professors (Ex. 5 at App. 1-3) filed by Mark Lemley of Stanford
`
`Law School (Ex. 5 at 1) urged the Supreme Court to “grant certiorari to eliminate the assignor
`
`estoppel doctrine altogether or to restore the doctrine to its narrow roots” (Ex. 5 at 2). Likewise,
`
`non-profit Engine Advocacy filed an amicus brief through its counsel of record at Harvard Law
`
`School’s Cyberlaw Clinic urging the Supreme Court to grant Minerva’s Petition because the case
`
`“cries out” for the Supreme Court’s review. Ex. 6 at 2. Hologic filed its own Cross-Petition on
`
`November 5, 2020. Ex. 7 (SCOTUS Docket Sheet for No. 20-631) at 1.
`
`On January 8, 2021, the U.S. Supreme Court granted Minerva’s Petition on the issue of
`
`assignor estoppel. Ex. 3 at 2. On January 11, 2021, the U.S. Supreme Court denied Hologic’s
`
`Cross-Petition. Ex. 7 at 1. It is estimated that oral argument in Minerva’s appeal is likely to occur
`
`in April of 2021, with a decision expected by the end of June of 2021. That decision, however,
`
`could involve a remand with appropriate guidance back to the Federal Circuit. Thus, the final
`
`exhaustion of all appeals in the First Action could plausibly occur well after the currently set trial
`
`date on the same patent in this action.
`
`In opposing Minerva’s Petition, Hologic incorrectly argued that “in addition to applying
`
`assignor estoppel, the district court and the Federal Circuit alternatively considered and rejected
`
`Minerva’s invalidity challenge on the merits, meaning that Minerva’s entire petition asks for
`
`nothing more than an advisory opinion.” Ex. 8 (Hologic’s Opposition to Minerva’s Petition) at 3.
`
`Presumably, if the Supreme Court had agreed with Hologic, it would not have granted Minerva’s
`
`Petition. Thus, the Supreme Court’s decision in the First Action has the potential to make
`
`invalidity of the ’348 patent a live issue in this case, and/or provide guidance as to the extent to
`
`which the claims in this case remain valid.
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`D.
`
`Status of the Present Action
`
`Hologic filed this case on July 8, 2020. D.I. 1. In its complaint, Hologic accuses the
`
`Redesigned Minerva EAS of infringement of claims 1, 3, 8, and 12 of the ’348 patent. Ex. 9 at 2.
`
`Claim 1 of the ’348 patent, the only independent claim asserted in this case, is the same claim that
`
`is currently on appeal to the Supreme Court in the First Action. Hologic has only asserted three
`
`other claims that all depend on Claim 1. The Court conducted a Rule 16 conference and set a
`
`schedule in this case that included a trial date of August 23, 2021 (i.e., shortly after the trial in
`
`Minerva’s case against Hologic set for August 9, 2021). D.I. 20 ¶ 16; Ex. 10 at 3; Ex. 11.
`
`In the October 23, 2020 Scheduling Order, the Court set the close of fact discovery for
`
`December 30, 2020. D.I. 20 ¶ 2. All agreed-upon depositions were set to occur by this deadline.
`
`However, in mid-December and on the eve of these depositions, Hologic first demanded, then
`
`moved to compel discovery of, Minerva’s privileged communications with its trial counsel
`
`extending back to before trial in the First Action. D.I. 51, Ex. 8 at 1-2, 12/18/2020 Casamiquela
`
`email. While Hologic’s motion seeking privileged communications was ultimately denied,
`
`resolving that dispute effectively delayed deposition discovery. D.I. 49. D.I. 56 at 72:25-76:19,
`
`83:4-21. Consequently, this case remains at an early stage with only one deposition having already
`
`been taken (by Minerva).4
`
`E.
`
`Potential Impact on the Present Action
`
`If the Supreme Court reverses the Federal Circuit’s application of assignor estoppel, there
`
`are multiple plausible scenarios that could impact the scope of this case. For example, if the
`
`4 On January 12, 2021, the parties submitted a Joint Motion for a Teleconference to Resolve a
`Discovery Dispute regarding Minerva’s request for a protective order suspending the remaining
`depositions pending resolution of this motion to stay. D.I. 58. The Court set a teleconference on
`this issue for February 3, 2021.
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`Supreme Court remands, the Federal Circuit may have to consider the merits of Minerva’s 35
`
`U.S.C. § 112 defenses (insufficient written description and lack of enablement). Guidance from
`
`either the Supreme Court, the Federal Circuit, or both, as to those defenses could either determine
`
`or inform the issue of Section 112 in this case.
`
`Moreover, if assignor estoppel no longer applies as to Minerva, then Minerva would be
`
`free to challenge the validity of the asserted claims in this action under at least alternate theories
`
`of invalidity, e.g., 35 U.S.C. §§ 102, 103. As noted, the Court’s Scheduling Order considers this
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`possible scenario, ordering that “Defendant must serve initial invalidity contentions thirty (30)
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`days after all appeals from the First Action are exhausted.” D.I. 20 ¶ 2.b.v.
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`V.
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`ARGUMENT
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`The power to stay a case is “incidental to the power inherent in every court to control the
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`disposition of the causes on its docket with economy of time and effort for itself, for counsel, and
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`for litigants.” Landis v. N. Am. Co., 299 U.S. 248, 254 (1936). “In the exercise of its sound
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`discretion, a court may hold one lawsuit in abeyance to abide the outcome of another which may
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`substantially affect it or be dispositive of the issues.” Bechtel Corp. v. Laborers’ Int’l Union, 544
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`F.2d 1207, 1215 (3d Cir. 1976). Delaware courts have consistently granted stays pending parallel
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`proceedings during or after the discovery period. See, e.g., Butamax(TM) Advanced Biofuels LLC
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`v. Gevo, Inc., No. 11-54-SLR, 2014 U.S. Dist. LEXIS 200342, at *5 (D. Del. July 11, 2014)
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`(granting stay 10 days from trial); First Am. Title Ins. Co. v. Maclaren, LLC, No. 10-cv-363
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`(GMS), 2012 WL 769601, at *4 (D. Del. Mar. 9, 2012) (fact discovery complete and trial date set);
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`Peschke Map Techs., LLC v. J.J. Gumberg Co., 40 F. Supp. 3d 393, 396 (D. Del. 2014) (Robinson,
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`J.) (granting IPR stay during ongoing discovery); Softview LLC v. Apple Inc., No. 12-989-LPS,
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`2013 WL 4757831, at *2 (D. Del. Sept. 4, 2013) (granting IPR stay after fact discovery). Three
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`general factors inform the Court’s exercise of its broad discretionary powers to stay an action: “(1)
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`whether granting the stay will simplify the issues for trial; (2) the status of the litigation,
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`particularly whether discovery is complete and a trial date has been set; and (3) whether a stay
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`would cause the non-movant to suffer undue prejudice from any delay, or allow the movant to gain
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`a clear tactical advantage.” Found. Med., Inc. v. Guardant Health, Inc., No. 17-807-LPS-CJB,
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`2018 WL 950261, at *1 (D. Del. Feb. 15, 2018); see also Butamax, 2014 U.S. Dist. LEXIS 200342,
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`at *4. Here, each factor supports a stay.
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`A.
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`A Stay Pending Minerva’s Appeal in the First Action is Likely to Simplify the
`Issues for Trial
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`1.
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`The Appeal May Impact the Scope of This Case
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`A stay to allow Minerva to exhaust its appellate rights in the First Action will result in a
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`simplification of issues. The Supreme Court has agreed to hear Minerva’s appeal challenging the
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`application of assignor estoppel relating to the ’348 patent. Accordingly, the Supreme Court will
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`decide whether to abolish assignor estoppel or whether to limit its application. In either situation,
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`the Supreme Court may remand the First Action to the Federal Circuit to further address assignor
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`estoppel or the substance of Minerva’s Section 112 invalidity challenges to claim 1 of the ’348
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`patent in the First Action.
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`The Federal Circuit may decide that claim 1 of the ’348 patent—the only asserted
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`independent claim in this case—is invalid. “[T]hat finding would reduce the number of issues left
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`to be litigated.” Softview, at *1; see also, e.g., UCB, Inc. v. Hetero USA Inc., 277 F. Supp. 3d 687
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`(D. Del. 2017) (the potential for simplification of the issues was significant because the Federal
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`Circuit appeal could find some or all of the asserted claims invalid.). Such a finding may also
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`determine or inform the Section 112 analysis for the remaining asserted claims, all of which depend
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`on claim 1 of the ’348 patent. For instance, if the Federal Circuit agrees with Minerva’s argument
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`Case 1:20-cv-00925-JFB-SRF Document 61 Filed 01/22/21 Page 15 of 23 PageID #: 1399
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`that the full scope of claim 1’s “applicator head” limitation is overbroad because it is not
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`adequately described or enabled under Section 112, that argument should apply with equal force
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`to the remaining asserted claims, which inherit the overbroad “applicator head” limitation from
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`claim 1. Under this scenario, if a stay is not granted, the Court and the parties would have
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`undertaken unnecessary and wasteful fact and expert discovery and dispositive motion practice,
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`not to mention trial, regarding claim 1 and potentially the remaining dependent claims. See
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`Novartis AG v. HEC Pharm Co., 183 F. Supp. 3d 560, 562 (D. Del. 2016) (Stark, J.) (“it would be
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`complicated and potentially wasteful for the Court to litigate the ’283 patent at the same time as
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`the Federal Circuit is reviewing its validity.”).
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`Even if Minerva’s appeal is only partially successful, the Supreme Court’s decision on
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`assignor estoppel, and any subsequent decision by the Federal Circuit in the First Action, would
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`impact whether, and to what extent, Minerva can challenge the validity of the asserted claims of
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`the ’348 patent in this case. For example, if assignor estoppel no longer bars Minerva’s invalidity
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`defenses but the Federal Circuit rejects Minerva’s Section 112 defenses on the merits, litigation
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`would be simplified as estoppel likely bars re-litigation of this specific issue and the Court could
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`gain insights from the Federal Circuit’s decision. See Softview, 2013 WL4757831, at *1. Minerva
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`would, however, be free to pursue alternative invalidity theories besides the Section 112 defense
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`for claim 1 (e.g., under Sections 102 and 103). D.I. 10 ¶¶ 64, 68. Such invalidity challenges would
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`apply to all asserted claims in this action (three of which were not tried in the First Action). Indeed,
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`the Scheduling Order considers this possible scenario, ordering that “Defendant must serve initial
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`invalidity contentions thirty (30) days after all appeals from the First Action are exhausted.” D.I.
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`20 ¶ 2.b.v. Under this scenario, if a stay is not issued, the parties may need to re-do depositions of
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`some of the same fact and/or expert witnesses, serve additional contentions and experts reports,
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`Case 1:20-cv-00925-JFB-SRF Document 61 Filed 01/22/21 Page 16 of 23 PageID #: 1400
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`and file additional dispositive motions, since additional invalidity claims for the ’348 patent would
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`become operative.
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`In any of these possible scenarios, the Supreme Court’s decision may have an impact on
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`future rulings in the case. By granting a stay, the parties and the Court would recognize cost and
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`time saving