Case 2:12-cv-01369-NBF Document 45 Filed 02/06/13 Page 1 of 7
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF PENNSYLVANIA
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`Plaintiffs,
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`v.
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`KONINKLIJKE PHILIPS ELECTRONICS
`N.V. and PHILIPS ELECTRONICS NORTH
`AMERICA CORPORATION,
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`ZOLL LIFECOR CORPORATION,
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`Civil No. 12-1369
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`Judge Nora Barry Fischer
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`MEMORANDUM ORDER
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`Defendant.
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`Presently before the Court is Defendant Zoll LifeCor Corporation’s (“Zoll”) Motion to Stay,
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`(Docket No. 26), Brief in Support (Docket No 27), Plaintiffs’ Koninklijke Philips Electronics NV
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`and Philips Electronics North America Corporation (“Philips”) opposition brief (Docket No. 29) and
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`supplement (Docket No. 33), Zoll’s Reply (Docket No. 31), Philip’s Sur Reply (Docket No. 37) and
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`both parties’ post hearing briefs (Docket Nos. 43, 44). Upon consideration of the parties’ positions
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`as outlined in briefs and oral argument at the Motion Hearing held on January 14, 2013 (Docket No.
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`42), Defendant’s Motion to Stay (Docket No. 26) is granted, in part and denied in part.
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`Zoll seeks a stay of proceedings in this case, pending the disposition of Philips v. Zoll
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`Medical, Civil Action 10-11041 (known as the “Massachusetts’s matter”) in front of Judge Nathanial
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`Gorton in the District of Massachusetts. Trial is set in the liability phase of that case for October 7,
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`2013. Zoll avers that said Massachusetts case involves six of the eight patents asserted in this case
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`and considerable overlap with the two new asserted patents. Said trial, they contend, would narrow
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`the issues in this case.
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`Page 1 of 7
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`Philips Exhibit 2027
`Zoll Lifecor v. Philips
`IPR2013-00615
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`Case 2:12-cv-01369-NBF Document 45 Filed 02/06/13 Page 2 of 7
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`On the other side, Philips insists that this case would not be significantly narrowed by the
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`resolution of that action, as the named defendant in this case, Zoll LifeCor Corp., is not a defendant
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`in the Massachusetts case; the accused product here, the LifeVest, is not at issue in that case; and two
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`additional different patents are asserted in this action.
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`Based on the record, there are multiple litigations pending between these parties. The first is
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`the “Massachusetts Matter,” brought by Philips against Zoll Medical on June 18, 2010 in the District
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`of Massachusetts before Judge Gorton. See Philips v. Zoll Medical, No. 1:10-cv-11041-NMG (D.
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`Mass. 2010). This suit asserts patent infringement of 15 patents by Zoll’s automatic external
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`defibrillators, the type usually hung on walls in public places. Six of these patents are also asserted
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`in this instant case. Judge Gorton has ruled on claim construction and has set a trial date for the
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`liability phase of that case for October 7, 2013. (Id. at Docket No. 106; August 18, 2011 Order).
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`Accordingly, opening expert reports and Rule 26 Reports are due by February 15, 2013; fact
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`discovery closes on April 30, 2013 and dispositive motions are due by May 31, 2013. (Id.). On
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`February 4, 2013 the parties filed a Joint Motion to Dismiss in the Massachusetts Matter dismissing
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`7 of Phillips’ asserted patents and 3 of Zoll’s counter asserted patents. To that end, the Court takes
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`judicial notice that only 1 dismissed patent is part of the Western District of Pennsylvania action and
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`of Philips’ 8 remaining patents in the Massachusetts Matter, 5 are also in suit here in Pennsylvania.
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`See FED. R. EVID. 201; Sands v. McCormick, 502 F.3d 263, 268 (3d Cir. 2007) (judicial
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`proceedings constitute public records and courts may take judicial notice of another court's opinions).
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`The second litigation was filed against Zoll Medical on January 5, 2012, in the Western
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`District of Washington and subsequently transferred to Judge Gorton in the District of Massachusetts
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`on November 15, 2012. See Philips v. Zoll, No. 2:12-cv-18 (W.D. Wash.); 1:12-cv-12255-NMG
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`(D. Mass. 2012) (“Washington Matter”). That patent infringement case asserts infringement by
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`Zoll’s “professional” defibrillators, i.e. the kinds used in hospitals, and is set to have a scheduling
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`conference on March 28, 2013. The third litigation is the instant case, in which Philips avers that
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`Zoll LifeCor’s wearable defibrillator, the LifeVest, infringes 8 of its patents. (Docket No. 1). The
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`last action is a suit by Zoll Medical against Philip’s subsidiary Respironics Inc. in the District of
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`Delaware, filed on December 27, 2012 involving airway machines. See Zoll v. Respironics, No. 12-
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`cv-01778-LPS (D. Del. 2012). Respironics Inc. filed its answer on January 28, 2013. As counsel
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`verified at the hearing, “the same two law firms are representing the parties for all four cases, the two
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`in Massachusetts, the one here, and the one in Delaware.” (Docket No. 42 at 35).
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`The Court notes that district courts have broad power to stay proceedings, “incidental to the
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`power inherent in every court to control the disposition of causes on its docket with economy of time
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`and effort for itself, for counsel and for litigants.” Bechtel Corp. v. Local 215, Laborers’ Int’l Union,
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`544 F.2d 1207, 1215 (3d Cir. 1976) (quoting Landis v. North Amer. Co., 299 U.S. 248, 254-55
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`(1936)); see also Wonderland Nurserygoods Co., Ltd. v. Thorley Indus., LLC, 858 F. Supp. 2d 461,
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`463 (W.D. Pa. 2012). In deciding whether to stay litigation in favor of litigation in another federal
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`court, “the general principle is to avoid duplicative litigation.” Colorado River Water Cons. Dist. v.
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`United States, 424 U.S. 800, 817 (1976). As such, “a district court may properly consider the
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`‘conservation of judicial resources and comprehensive disposition of litigation,’ and attempt to avoid
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`duplicating a proceeding already pending in a federal district court.” Complaint of Bankers Trust
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`Co. v. Chatterjee, 636 F.2d 37, 40 (3d Cir. 1980) (quoting Kerotest Mfg Co. v. C-O-Two Fire
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`Equipment Co., 342 U.S. 180, 183, 72 S.Ct. 219, 221, 96 L.Ed. 200 (1952), quoted in Colorado
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`River, 424 U.S. at 817)). In determining whether a stay is appropriate, a court must weigh the
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`competing interests of the parties to the litigation and address whether any party is prejudiced by the
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`stay order. See Landis, 299 U.S. at 254-55; Cheyney State College Faculty v. Hufstedler, 703 F.2d
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`732, 737-38 (3d Cir. 1983).
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`The parties’ numerous pending litigations in multiple jurisdictions are a burden both on
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`judicial resources and on the parties who are “spending significant dollars in various locales bringing
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`litigation.” (Docket No. 42 at 45). As the Court stated at the hearing, if as the parties claim, there
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`have been “fruitful negotiations for a period of time and each time these negotiations have fallen off
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`a cliff, one party decides to bring a lawsuit, how does that benefit the parties involved, the courts that
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`are involved, and ultimately securing resolution?” (Id. at 29). Thus the Court suggested at the
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`hearing that a hearty mediation with a skilled mediator experienced in the patent area would be the
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`appropriate next step. (Id. at 45). At the hearing, Plaintiffs’ counsel stated “Philips would be
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`agreeable to additional mediation in this Court”. (Id. at 29). Indeed in its brief, “Phillips agrees with
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`the Court’s suggestion to engage a mediator with both legal and technical experience.” (Docket No.
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`43 at 8). Zoll notes as well that as “the parties’ settlement discussions to date have uniformly
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`contemplated that any settlement would necessarily resolve all of the defibrillator actions, including
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`this one…Zoll joins Philips in the willingness that Philip expressed at the hearing to participating in
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`early ADR procedure in this Court.” (Docket No. 44 at 4).
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`Given the parties’ agreement and the status of the above-described patent infringement
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`litigations, it is this Court’s view that the parties could benefit from Court annexed mediation, the
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`costs of which are borne by the parties, with a neutral skilled in patent litigation who may be able to
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`settle these matters on a global basis. Accordingly, the parties are ordered to participate in the
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`Western District of Pennsylvania’s Alternative Dispute Resolution (ADR) program. See Court’s
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`ADR Policies and Procedures www.pawd.uscourts.gov.
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`The Western District of Pennsylvania has a well-regarded Alternative Dispute Resolution
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`(“ADR”) Program, governed by its Local Rule of Practice 16.2 that mandates the use of ADR, by
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`either mediation, early neutral evaluation and/or arbitration in all civil cases (except social security
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`and those involving prisoners). See Local Rule 16.2; Local Patent Rule 1.5; Court’s ADR Policies
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`and Procedures www.pawd.uscourts.gov. This Court maintains a list of neutrals specially qualified in
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`the patent arena. http://www.pawd.uscourts.gov/Applications/pawd_adr/Pages/ListSelNeutral.CFM.
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`Further, in the Western District, the parties are jointly responsible for the cost of the mediation and
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`are expected to complete the ADR within the 60 days of the initial case management conference. Id.
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` at Court’s ADR Policies and Procedures 3.4.1
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`With accord that the most efficient step towards comprehensive disposition of the subject
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`disputes is Court annexed mediation, the Court with its “broad power to stay proceedings,” grants in
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`part, Zoll’s Motion and stays all other activity in this proceeding until conclusion of said mediation.
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`Bechtel Corp., 544 F.2d at 1215; Complaint of Bankers Trust Co. 636 F.2d at 40.
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`The instant civil action is thus designated for placement into the United States District Court
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`for the Western District of Pennsylvania’s Alternative Dispute Resolution (ADR) program. The
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`parties are directed to fully comply with Local Rule 16.2 and the Court’s ADR Policies and
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`Procedures, which can be accessed at the Court’s website at www.pawd.uscourts.gov. As a party
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`The Court understands that ADR in the District of Massachusetts is “encouraged,” but not mandatory, and
`See
`without
`costs
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`the
`participants.
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`District
`of Mass.
`Local
`Rule
`16.4;
`http://www.mad.uscourts.gov/attorneys/pdf/Attorney_Guide.pdf. A majority of cases referred to ADR in that District are
`assigned to magistrate judges of the Court. In this instance, the parties mediated before Magistrate Judge Jennifer Boal
`on January 11, 2013 and the case was not resolved. (Docket No. 125 at Civil Action 10-cv-11041-NMG).
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`involved in related litigation, representatives of Zoll Medical Corporation are strongly encouraged to
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`participate in said mediation. Last, given past unsuccessful settlement attempts, the Court advises
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`that it expects all parties and counsel to proceed in good faith. See ADR Policies and Procedures 2.4.
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`(If a party files a motion with the Court alleging matters such as bad faith the assigned US District Judge
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`may adjudicate the motion or may elect to request another judge to do so.) To the extent any party and/or
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`counsel fails to adhere to the Court’s ADR Policies, then and in that event, the Court will entertain
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`motions for sanctions.
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`For these reasons,
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`IT IS HEREBY ORDERED that Zoll’s Motion [26] is denied to the extent that the parties
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`shall participate in the United States District Court for the Western District of Pennsylvania’s
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`Alternative Dispute Resolution (ADR) program in compliance with Local Rule 16.2.
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`IT IS FURTHER ORDERED that Zoll’s Motion [26] is granted to the extent that this action,
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`in all other respects except as outlined below, is stayed until conclusion of Court annexed mediation.
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`IT IS FURTHER ORDERED that the attorneys of record will jointly submit to the Court a
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`stipulation selecting an ADR process and neutral (pursuant to Revised Local Rule 16.2) by no later
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`than February 15, 2013 at 12:00 p.m. The parties shall exchange the initial disclosures required by
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`Fed. R. Civ. P. 26(a)(1) ("Initial Disclosures") in accord with Local Patent Rule 3.1 by February 28,
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`2013 in preparation for said mediation. Mediation shall be concluded by April 30, 2013 and a report
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`by the neutral shall be promptly filed. Thereafter the Court will hold a status conference to address
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`any and all remaining issues on May 7, 2013 at 2:00 p.m.
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`s/Nora Barry Fischer
`Nora Barry Fischer
`U.S. District Court
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`Case 2:12-cv-01369-NBF Document 45 Filed 02/06/13 Page 7 of 7
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`Date: February 6, 2013
`cc/ecf: All counsel of record.
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