Case 1:17-cv-12194-RGS Document 54 Filed 06/28/19 Page 1 of 11
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MASSACHUSETTS
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`CARIS MPI, INC.,
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`Plaintiff,
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`v.
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`FOUNDATION MEDICINE, INC.,
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`Defendant.
`___________________________________
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`C.A. No. 1:17-cv-12194-RGS
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`FOUNDATION MEDICINE INC.’S MEMORANDUM IN SUPPORT OF ITS
`UNOPPOSED MOTION TO STAY THE CASE PENDING INTER PARTES REVIEW
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`Case 1:17-cv-12194-RGS Document 54 Filed 06/28/19 Page 2 of 11
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`I. 
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`II. 
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`TABLE OF CONTENTS
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`INTRODUCTION ................................................................................................................. 1 
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`STATEMENT OF FACTS .................................................................................................... 2 
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`III.  LEGAL STANDARDS ......................................................................................................... 3 
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`IV.  ARGUMENT ......................................................................................................................... 4 
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`A.  This Litigation Remains in Its Early Stages .................................................................... 4 
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`B.  A Stay Pending Resolution of the IPR Proceedings Will Streamline the Issues in
`the Litigation ............................................................................................................... 4 
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`C.  A Stay Would Not Cause Prejudice or Create a Tactical Advantage .............................. 7 
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`V.  CONCLUSION ...................................................................................................................... 7 
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`Case 1:17-cv-12194-RGS Document 54 Filed 06/28/19 Page 3 of 11
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
`ACQIS, LLC v. EMC Corp.,
`109 F. Supp. 3d 352 (D. Mass. 2015) ............................................................................3, 4, 5, 6
`
`AIP Acquisition LLC v. Level 3 Communications, LLC,
`No. 12-cv-00617-GMS, 2014 WL 12642000 (D. Del. Jan. 9, 2014) ........................................4
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`Aplix IP Holdings Corp. v. Sony Computer Entertainment, Inc.,
`137 F. Supp. 3d 3 (D. Mass. 2015) ................................................................................3, 4, 6, 7
`
`Aylus Networks, Inc. v. Apple Inc.,
`856 F.3d 1353 (Fed. Cir. 2017)..................................................................................................6
`
`Fresenius USA, Inc. v. Baxter Int’l, Inc.,
`721 F.3d 1330 (Fed. Cir. 2013)..................................................................................................5
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`Gryphon Networks Corp. v. Contact Center Compliance Corp.,
`792 F. Supp. 2d 87 (D. Mass. 2011) ..........................................................................................4
`
`Irwin Indus. Tool Co. v. Milwaukee Electric Tool Corp.,
`No. 15-cv-30005-MGM-KAR, 2016 WL 1735330 (D. Mass. Apr. 28, 2016) ......................6, 7
`
`Koninklijke Philips N.V. v. Wangs Alliance Corp.,
`No. 1:14-cv-12298-DJC, Dkt. 156 (D. Mass. Jan. 19, 2016) ....................................................5
`
`Landis v. North America Co.,
`299 U.S. 248 (1936) ...................................................................................................................3
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`Manson v. GMAC Mortgage, LLC,
`No. 08-cv-12166-RGS, 2010 WL 3001203 (D. Mass. July 28, 2010) ......................................6
`
`Procter & Gamble Co. v. Kraft Foods Global, Inc.,
`549 F.3d 842 (Fed. Cir. 2008)....................................................................................................3
`
`Service Solutions U.S., LLC v. Autel.US Inc.,
`No. 13-cv-10534-TGB, 2015 WL 401009 (E.D. Mich. Jan. 28, 2015) .....................................5
`
`Zond, LLC v. Intel Corp.,
`No. 1:13-cv-11570, Dkt. 120 (D. Mass. Apr. 18, 2014) ............................................................4
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`Case 1:17-cv-12194-RGS Document 54 Filed 06/28/19 Page 4 of 11
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`I.
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`INTRODUCTION
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`This case should be stayed pending resolution of inter partes review (“IPR”) proceedings
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`that the Patent Trial and Appeal Board (the “PTAB” or the “Board”) recently instituted for four
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`of the five Patents-in-Suit in this case.1 In its institution decisions, the Board found that there
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`was a reasonable likelihood that the Petitioner, Defendant Foundation Medicine, Inc. (“FMI”),
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`would prevail in showing the unpatentability of at least one challenged claim for four of the
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`challenged Patents-in-Suit. Staying this case will allow the PTAB to evaluate the validity of
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`sixty-six claims across four of the five Patents-in-Suit in a timely and efficient manner. Given
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`that all five patents claim priority to the same provisional application filed May 18, 2006, and
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`share similar claims and specifications, the Final Written Decisions regarding the IPRs instituted
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`as to four of those patents will also greatly simplify the issues as to the remaining fifth patent.
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`The Board’s review of this large set of claims will undoubtedly narrow the case.
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`The posture of the case, the potential for simplifying the issues, and the absence of
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`prejudice or tactical advantage each favor a stay. First, the case is at a very early stage. FMI’s
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`motion to dismiss remains pending and no answer has been filed. No scheduling order has been
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`entered, no discovery has been taken, no contentions have been exchanged, and no claims have
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`been construed. The parties remain at the starting line. Second, the five instituted IPRs will
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`streamline the issues in the case. If some (or all) of the sixty-six challenged claims in four of the
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`five asserted patents are held unpatentable, the scope of this multi-patent litigation will be
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`narrowed significantly. Even if no claims are held unpatentable, the application of estoppel will
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`narrow the case. Third, Caris will not suffer undue prejudice or tactical disadvantage from a stay
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`1 The “Patents-in-Suit are U.S. Patent Nos. 8,880,350 (the “’350 Patent”) (Dkt. 1-1); 9,092,392
`(the “’392 Patent”) (Dkt. 1-2); 9,372,193 (the “’193 Patent”) (Dkt. 1-3); 9,383,365
`(the “’365 Patent) (Dkt. 1-4); and 9,292,660 (the “’660 Patent”) (Dkt. 1-5).
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`Case 1:17-cv-12194-RGS Document 54 Filed 06/28/19 Page 5 of 11
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`as the case remains at the pleading stage and litigation has yet to begin. Indeed, Caris has stated
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`that it does not oppose FMI’s motion to stay the case, confirming that a stay would not result in
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`any prejudice.
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`II.
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`STATEMENT OF FACTS
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`Caris filed its Complaint against FMI on November 7, 2017, asserting infringement of
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`five related patents (the Patents-in-Suit), which each claim priority to a provisional application
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`filed May 18, 2006. Dkt. 1. Initially, the case was assigned to District Judge Mark L. Wolf. On
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`January 16, 2018, FMI filed a motion to dismiss for lack of patentable subject matter and written
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`description. Dkt. 22. FMI’s motion remains pending, and no answer to Caris’s Complaint has
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`been filed.
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`On November 5 and 6, 2018, FMI filed six IPR petitions challenging the Patents-in-Suit.
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`On May 14 and 30, 2019, the PTAB issued its decisions on institution in those IPRs. As
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`described below, the PTAB instituted IPR in five of the six proceedings. See Declaration of
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`Kevin M. Yurkerwich (“Yurkerwich Decl.”), Exs. 1-5.
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`IPR No.
`IPR2019-00164
`IPR2019-00165
`IPR2019-00166
`IPR2019-00170
`IPR2019-00171
`IPR2019-00203
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`U.S. Patent No. Challenged Claims Instituted
`8,880,350
`1-14
`Yes
`9,092,392
`1-20
`No
`9,292,660
`1-16, 18, 22, 23
`Yes
`9,372,193
`1-14
`Yes
`9,383,365
`1-14
`Yes
`9,292,660
`17, 19-21, 24
`Yes
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`In granting institution of five of six IPR petitions filed by FMI, the PTAB determined that
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`FMI was reasonably likely to prevail in demonstrating the unpatentability of at least one of the
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`challenged claims of four of Caris’s five asserted Patents-in-Suit: the ’660, ’350, ’193, and ’365
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`patents. See Yurkerwich Decl., Ex. 1 at 21 (Decision on Institution from IPR2019-00166); Ex. 2
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`at 21 (Decision on Institution from IPR2019-00203); Ex. 3 at 29 (Decision on Institution from
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`IPR2019-00164); Ex. 4 at 26 (Decision on Institution from IPR2019-00170); Ex. 5 at 27
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`(Decision on Institution from IPR2019-00171). Absent extraordinary circumstances, a final
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`written decision will issue in each of these IPRs no later than May 30, 2020. See 37 C.F.R. §
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`42.100.2
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`Following the institution decisions, on June 10, 2019, counsel for FMI contacted counsel
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`for Caris regarding staying this litigation pending resolution of the IPRs. Caris’s counsel
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`confirmed that it does not oppose FMI’s motion to stay.
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`On June 25, 2019, this case was reassigned to District Judge Richard G. Stearns, and the
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`Court scheduled a date for hearing on FMI’s motion to dismiss.
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`III. LEGAL STANDARDS
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`The Court has inherent and discretionary power to stay proceedings to manage its docket.
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`See Landis v. N. Am. Co., 299 U.S. 248, 254-55 (1936); Procter & Gamble Co. v. Kraft Foods
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`Global, Inc., 549 F.3d 842, 848-49 (Fed. Cir. 2008). This power extends to stays for related
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`proceedings pending before the PTO, including IPRs. See Aplix IP Holdings Corp. v. Sony
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`Computer Entm’t, Inc., 137 F. Supp. 3d 3, 4 (D. Mass. 2015); ACQIS, LLC v. EMC Corp., 109 F.
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`Supp. 3d 352, 355 (D. Mass. 2015). In evaluating a motion to stay, the Court considers three
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`factors: “(1) the stage of the litigation, including whether discovery is complete and a trial date
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`has been set; (2) whether a stay will simplify the issues in question and the trial of the case; and
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`(3) whether a stay will unduly prejudice or present a clear tactical disadvantage to the non-
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`moving party.” Aplix, 137 F. Supp. 3d at 4-5 (collecting cases).
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`2 This one-year deadline may be extended up to six months for good cause. See 37 C.F.R.
`§ 42.100(c).
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`IV. ARGUMENT
`A.
`This Litigation Remains in Its Early Stages
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`This five-patent case remains in its infancy. FMI’s motion to dismiss remains pending
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`and no answer has been filed. No scheduling order has issued, no discovery has been served or
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`provided, and no trial date has been set. No infringement or invalidity contentions have been
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`prepared, and no claim construction briefs have been drafted. Because this case has not begun, a
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`stay would save significant resources while the IPRs simplify the case. Courts routinely grant
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`stay motions in cases such as this one that are at an early stage based on the potential for
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`significantly narrowing the issues in the case. See, e.g., Order, Zond, LLC v. Intel Corp.,
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`No. 1:13-cv-11570, Dkt. 120 (D. Mass. Apr. 18, 2014) (Stearns, J.) (granting stay pending IPR in
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`multi-patent case that was “still in its early stage – the Markman process not having
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`commenced”); ACQIS, 109 F. Supp. 3d at 356 (granting stay pending inter partes review where
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`“discovery [wa]s not yet complete, and a trial date ha[d] not been set”); see also Gryphon
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`Networks Corp. v. Contact Ctr. Compliance Corp., 792 F. Supp. 2d 87, 92 (D. Mass. 2011)
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`(granting a stay pending reexamination proceedings where, “[a]lthough the parties have engaged
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`in substantial written discovery, they are only beginning the process of conducting depositions”);
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`AIP Acquisition LLC v. Level 3 Commc’ns., LLC, No. 12-cv-00617-GMS, 2014 WL 12642000,
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`at *2 n.5 (D. Del. Jan. 9, 2014) (granting stay one week before claim construction hearing).
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`The very early stage of the proceedings in this case strongly favors a stay.
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`B.
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`A Stay Pending Resolution of the IPR Proceedings Will Streamline the Issues
`in the Litigation
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`A stay of this case will simplify the issues in the case. IPR has been instituted on every
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`claim of four out of the five Patents-in-Suit. Cancellation of all of the claims of these four
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`patents would end the litigation with respect to these patents, leaving only one patent left in the
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`case. See Fresenius USA, Inc. v. Baxter Int’l, Inc., 721 F.3d 1330, 1340 (Fed. Cir. 2013)
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`(“[W]hen a claim is cancelled, the patentee loses any cause of action based on that claim, and
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`any pending litigation in which the claims are asserted becomes moot.”). This case narrowing
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`would greatly simplify the issues before the court, even if the IPRs will not necessarily dispose
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`of the case in its entirety. See, e.g., Order, Koninklijke Philips N.V. v. Wangs Alliance Corp.,
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`No. 1:14-cv-12298-DJC, Dkt. 156 (D. Mass. Jan. 19, 2016) (granting stay where IPR was
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`instituted for six of the eight patents-in-suit, concluding that “IPR is likely to narrow this case in
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`some way – saving time and effort in the long-run – and the parties and the Court can then
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`proceed with this narrower scope through the remainder of the litigation”); ACQIS, 109 F. Supp.
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`3d at 358 (granting stay where “IPR proceedings [did] not involve all asserted patents or
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`claims”); see also Serv. Sols. U.S., LLC v. Autel.US Inc., No. 13-cv-10534-TGB, 2015 WL
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`401009, at *3 (E.D. Mich. Jan. 28, 2015) (“[T]he Court is not convinced that a stay is
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`inappropriate merely because only one patent is under review. Though a stay would have greater
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`potential to simplify the issues if all seven patents were involved in the IPR proceeding, this does
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`not mean that a more limited review would not help simplify the case.”).
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`Moreover, here, all of the Patents-in-Suit—including the ’392 patent, which is the only
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`patent not the subject of an instituted IPR—are related, sharing substantially similar claims and
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`specifications, and they are asserted against common accused products. See Dkt. 1-1 – 1-5.
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`Each of the patents asserted by Caris, which claim priority to a provisional application filed May
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`18, 2006, generally claim a system for identifying potential cancer therapeutics that could be
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`effective based on an individual’s molecular profile. Given this “significant overlap” in the
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`relevant issues across all of the Patents-in-Suit, the fact that the ’392 patent will remain does not
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`detract from the efficiencies to be gained by staying this case in its entirety. See ACQIS, 109 F.
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`Supp. 3d at 358 (“[D]enying a stay entirely, or granting a stay only as to those patents and claims
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`under IPR, could result in costly inefficiencies for the parties and the Court by introducing a
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`need for certain portions of discovery and motion practice to be redone after the completion of
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`the IPRs.”).
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`Moreover, even if no claims are invalidated, the IPRs will simplify issues before the
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`Court because FMI would be estopped in this case from relying on arguments that were raised or
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`reasonably could have been raised during the IPRs. See 35 U.S.C. § 315(e)(2); Aplix, 137 F.
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`Supp. 3d at 5 (“If the PTO finds at least one patent valid, the issues in this case will be simplified
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`because [defendant] will be estopped from raising the same invalidity contentions before this
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`court.” (quotation marks and citation omitted)). The Court will additionally have the benefit of a
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`more complete record. See, e.g., Aylus Networks, Inc. v. Apple Inc., 856 F.3d 1353, 1359 (Fed.
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`Cir. 2017) (holding that statements made during an IPR can support a finding of prosecution
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`disclaimer); Irwin Indus. Tool Co. v. Milwaukee Elec. Tool Corp., No. 15-cv-30005-MGM-
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`KAR, 2016 WL 1735330, *3 (D. Mass. Apr. 28, 2016) (noting that irrespective of the outcome
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`of an IPR the PTAB’s decision will clarify the issues for trial).
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`Thus, regardless of the outcomes in each IPR, a stay will focus the case, preserve judicial
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`resources, and avoid the enormous and potentially unnecessary cost of a five-patent case with
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`dozens of claims on issues that ultimately may become moot, changed, or narrowed. Cf. Manson
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`v. GMAC Mortg., LLC, No. 08-cv-12166-RGS, 2010 WL 3001203, at *2 (D. Mass. July 28,
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`2010) (Stearns, J.) (“The court is willing to risk the delay of several months in light of the time
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`and resources that will likely be saved by having the benefit of the [parallel adjudicator’s]
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`decision.”).
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`Case 1:17-cv-12194-RGS Document 54 Filed 06/28/19 Page 10 of 11
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`C.
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`A Stay Would Not Cause Prejudice or Create a Tactical Advantage
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`The parties will not be prejudiced by a stay in this case. First and foremost, Caris has
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`assented to FMI’s motion for a stay. This case has been pending since November 2017 and there
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`is no indication that the parties’ interests would be harmed from delay. See Irwin, 2016 WL
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`1735330, at *4 (“[T]he mere potential for delay . . . is insufficient to establish undue prejudice.”
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`(quotation marks and citation omitted)).
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`Nor will Caris suffer any tactical disadvantage. The IPRs were filed before the Court
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`ruled on FMI’s motion to dismiss, and thus FMI has not yet even answered the Complaint.
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`Furthermore, all of the IPR proceedings will be completed by May 30, 2020, twelve months after
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`institution (barring an extension for good cause). See 35 U.S.C. § 316(a)(11). At that point, the
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`estoppel provision becomes effective. See 35 U.S.C. § 315(e)(2). Thus, any delay is expected to
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`be relatively short and will not significantly affect the parties’ positions in the litigation.
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`See, e.g., Aplix, 137 F. Supp. 3d at 5-6 (finding stay will not prejudice nonmoving party where
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`moving party sought the stay in the early stages of the litigation and the IPRs had the potential of
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`ultimately expediting resolution of the case).
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`The lack of prejudice strongly favors a stay.
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`V.
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`CONCLUSION
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`For all of the above reasons, FMI respectfully requests that the Court stay the case until
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`the PTAB issues Final Written Decisions on the five instituted IPRs (IPR2019-00164, -00166,
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`-00170, -00171, and -00203).
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`Dated: June 28, 2019
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`Respectfully submitted,
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`/s/ David B. Bassett
`David B. Bassett (BBO #551148)
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`Case 1:17-cv-12194-RGS Document 54 Filed 06/28/19 Page 11 of 11
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`WILMER CUTLER PICKERING HALE
` AND DORR LLP
`7 World Trade Center
`250 Greenwich Street
`New York, NY 10007
`Tel.: (212) 230-8800
`Fax: (212) 230-8888
`david.bassett@wilmerhale.com
`
`Vinita Ferrera (BBO #631190)
`Alexandra W. Amrhein (BBO #676604)
`Kevin M. Yurkerwich (BBO #689909)
`WILMER CUTLER PICKERING HALE
` AND DORR LLP
`60 State Street
`Boston, MA 02109
`Tel.: (617) 526-6000
`Fax: (617) 526-5000
`vinita.ferrera@wilmerhale.com
`alexandra.amrhein@wilmerhale.com
`kevin.yurkerwich@wilmerhale.com
`
`Attorneys for Defendant
`Foundation Medicine, Inc.
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