Case 2:12-cv-01369-NBF Document 44 Filed 02/01/13 Page 1 of 10
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`UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF PENNSYLVANIA
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`KONINKLIJKE PHILIPS ELECTRONICS N.V.
`and PHILIPS ELECTRONICS NORTH
`AMERICA CORPORATION,
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` Plaintiffs,
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`C.A. No. 2:12-cv-01369-NBF
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`Judge Nora Barry Fischer
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`v.
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`ZOLL LIFECOR CORPORATION,
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` Defendant.
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`Electronically Filed
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`ZOLL’S SUPPLEMENT BRIEF IN SUPPORT OF ITS MOTION TO STAY
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`ZOLL Lifecor Corporation (“ZOLL”) writes to address several further considerations
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`raised by the Court at the conclusion of the January 14, 2013 hearing.
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`I.
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`Stay Is Warranted Given The Substantial Overlap Of Issues With Those In Play In
`The Massachusetts Matter
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`As discussed in the pre-hearing briefing, six of the eight patents asserted in this case are
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`also asserted in the Massachusetts matter. With regard to the remaining two asserted patents
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`(U.S. Patent Nos. 5,593,427 and 5,749,904) in this case, they are members of the same family as
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`the six overlapping patents, have the same named inventors, and are allegedly based on the same
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`priority document filed on August 6, 1993. As the chart below illustrates, they also significantly
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`overlap in terms of both substance and phraseology (illustrative overlapping patent on the left):
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`U.S. Patent No. 5,836,978
`(Claim 1)
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`U.S. Patent No. 5,593,427
`(Claim 9)
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`U.S. Patent No. 5,749,904
`(Claim 1)
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`A method for applying
`electrotherapy to a patient
`through electrodes connected to
`an energy source, the method
`comprising the following steps:
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`A method for applying
`electrotherapy to a patient
`through electrodes connected to
`an energy source, the method
`comprising the following steps:
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`1. A method for delivering
`electrotherapy to a patient
`through electrodes connectable
`to a plurality of capacitors, the
`method comprising the
`following steps:
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`Philips Exhibit 2025
`Zoll Lifecor v. Philips
`IPR2013-00618
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`Case 2:12-cv-01369-NBF Document 44 Filed 02/01/13 Page 2 of 10
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`discharging the energy source
`across the electrodes to deliver
`electrical energy to the patient
`in a multiphasic waveform
`having an earlier phase and a
`later phase, the later phase
`having a fixed duration;
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`simultaneously monitoring a
`patient-dependent electrical
`parameter and time during the
`discharging step;
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`adjusting a discharge parameter
`based on a value of the
`monitored electrical parameter
`and the monitored time.
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`discharging the energy source
`across the electrodes to deliver
`electrical energy to the patient
`in a multiphasic waveform;
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`discharging at least one of the
`capacitors across the electrodes
`to deliver electrical energy to
`the patient;
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`monitoring a patient-dependent
`electrical parameter during the
`discharging step;
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`monitoring a patient-dependent
`electrical parameter during the
`discharging step; and
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`adjusting energy delivered to
`the patient based on a value of
`the electrical parameter.
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`adjusting a discharge parameter
`based on a value of the
`monitored electrical parameter,
`the adjusting step comprising
`discharging the energy source
`across the electrodes in a phase
`of the multiphasic waveform
`until the end of a predetermined
`time period or until the
`monitored electrical parameter
`reaches a predetermined value,
`whichever occurs first.
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`Thus, almost every claim term in each of the non-overlapping patents is found in one, if
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`not all, of the overlapping patents.
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`Of course, a finding in the Massachusetts Matter that any or all of the asserted claims in
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`the six patents there that overlap with patents in this case are invalid or unenforceable will moot
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`those claims for purposes of this case. Blonder–Tongue Laboratories, Inc. v. University of
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`Illinois Foundation, 402 U.S. 313, 350 (1971).
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`Moreover, the subsidiary issues bearing on invalidity and inequitable conduct that will be
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`addressed in the Massachusetts Matter potentially have direct applicability to the issues in this
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`case, on both the six overlapping patents and the two non-overlapping patents. For instance, in
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`the Massachusetts Matter, Philips has taken the position that it is entitled to a date of invention
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`that predates its priority filing date. Given the substantial overlap in claim scope, the
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`development and resolution of that issue in the Massachusetts Matter should at minimum
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`streamline this same inquiry in this case, including by providing a more fully-developed record,
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`with regard to all eight of the patents at issue here.
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`Given the substantive overlap among all eight patents in this case, this is generally true
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`also for other subsidiary invalidity issues, since the prior art will likely overlap substantially if
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`not entirely between the two cases. So too the inequitable conduct defenses. By pausing this
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`case while the Massachusetts Matter proceeds through the liability trial, this Court would
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`generally have the benefit of rulings on these issues, as well as of a more fully developed record
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`on the overlapping issues of invalidity and inequitable conduct, including as a consequence of
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`expert reports, inventor and expert deposition testimony, and expert and inventor trial testimony.
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`In addition, the defense of laches is also at issue in the upcoming liability trial in the
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`Massachusetts Matter. That is also a defense in this case, and in both it is predicated on Philips’
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`long—and inexcusable—delay in pressing the claims in the two cases. The Court’s resolution of
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`that defense in the Massachusetts Matter should thus focus and streamline the consideration of
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`that defense in this case, especially where Philips delayed even longer in pursuing the allegations
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`in this case than in the Massachusetts Matter.
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`In short, there is substantial overlap of issues in this case as in the Massachusetts matter,
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`and the potential for streamlining the issues in this case, and/or offering a more fully developed
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`record, as a consequence of pausing this action for several more months until the liability trial in
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`the Massachusetts Matter concludes warrants the stay ZOLL seeks.1 Resco Products, Inc. v.
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`Bosai Minerals Group Co., Ltd., 2010 WL 2331069 (W.D. Pa. June 4, 2010) (stay favored
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`1 By contrast, the suit that ZOLL’s parent company recently brought suit against Philips’
`Respironics subsidiary in District of Delaware concerns a different patent than any of the ones in
`this case or the Massachusetts Matter, and the accused product in that case concerns a technology
`for treating sleep maladies, not a defibrillation product.
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`because “the court agrees with defendants’ position that substantial time, effort, and resources
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`may be saved by” staying action).
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`Finally on this point, there is the practical matter that cases as a general rule are more
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`likely to settle as trial nears, or shortly after verdicts are rendered. The parties’ settlement
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`discussions to date have uniformly contemplated that any settlement would necessarily resolve
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`all of the defibrillator actions, including this one. Pausing this action thus offers the possibility
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`of this case being fully resolved through settlement. Towards this end, ZOLL joins Philips in the
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`willingness that Philips expressed at the hearing to participating in an early ADR procedure in
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`this Court, should the Court decide to grant ZOLL’s motion in part, but deny it in part so that the
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`parties could get the benefits of the Court’s ADR offices.
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`II.
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`Philips Has No Product That Competes With The LifeVest Product, Further
`Warranting The Stay ZOLL Seeks
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`This case is about wearable defibrillators. A wearable defibrillator is worn over a
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`continuous period of time, whereas the defibrillators at issue in the other cases are deployed only
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`when needed. The products are not interchangeable, and serve different markets. Philips does
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`not sell a wearable defibrillator or any other product in competition with the LifeVest product
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`that is accused of infringement in this case. Philips and ZOLL are thus not “competitors” for
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`purposes of evaluating whether a stay of this case is warranted, and a stay would not unfairly
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`prejudice Philips given that this long-overdue cause of action is entirely about whether Philips
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`can recover monetary damages from ZOLL.
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`III. The Public Interest In Conserving Judicial Resources Also Warrants Staying This
`Action
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`The public has an interest in conserving judicial resources, and that interest further
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`warrants the stay ZOLL seeks. Del Rio v. Creditanswers, LLC, 2010 WL 3418430 (S.D. Cal.
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`Aug. 26, 2010) (“[a] stay pending the outcome of the appeal will serve the public interest by
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`potentially preserving judicial resources”); McArdle, 2010 WL 2867305, at *4 (“[T]he public
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`interest in the preservation of judicial resources weighs in favor of staying this case.”); Richards
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`v. Ernst & Young LLP, 2012 WL 92738 (N.D. Cal. Jan. 11, 2012) (“the economical use of
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`judicial resources lead the public interest to favor a stay”); N. Am. Film Corp. v. Cincinnati
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`Milacron, Inc., 1994 WL 642701 (E.D. Pa. Nov. 14, 1994) (noting the public interest “to avoid
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`duplicative and expensive litigation”); Creative Waste Mgmt., Inc. v. Capitol Envtl. Services,
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`Inc., 2004 WL 2384991 (E.D. Pa. Oct. 22, 2004) (recognizing “public interest in conservation of
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`scarce judicial resources”).
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`Philips’ pursuit of multiple, time-staggered actions in disparate forums on overlapping
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`issues to obtain a tactical advantage over ZOLL is an inefficient use of scarce judicial resources,
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`and does not warrant the deference that a typical plaintiff might expect in terms of securing as
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`early a resolution of its claims as the Court’s schedule would provide. See Hawkins v. U.S.
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`Parole Com., 2006 WL 3313728 (D. Kan. Oct. 6, 2006) (quoting Colorado River Water
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`Conservation Dist. v. United States, 424 U.S. 800, 817 (1976)) (“Duplicative litigation in the
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`federal courts is to be discouraged.”).
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`Moreover, stay or no stay, because Philips delayed so long in bringing this suit, all of the
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`asserted patents in this case will expire before this case is resolved. This Court’s invalidity
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`findings will thus only affect Philips’ right to damages. Sears, 376 U.S. at 230 (“when the patent
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`expires the monopoly created by it expires, too, and the right to make the article-including the
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`right to make it in precisely the shape it carried when patented-passes to the public”). Thus,
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`while the public generally has an interest in invalidating worthless patents without delay,2 this
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`principle has no bearing here because each asserted patent will expire before invalidity is
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`resolved in this case. Ballantyne Instruments & Electronics, Inc. v. Wagner, 345 F.2d 671, 672
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`(6th Cir. 1965) (“[t]he public interest in every patent case requires that suits involving the
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`validity of patents should be speedily determined”). Put simply, once Philips’ patents expire,
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`they will be unenforceable regardless of this Court’s invalidity findings.
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`IV.
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`The Golden Quality Ice Cream Factors Favor A Stay
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`The Court in Golden Quality Ice Cream Co., Inc. v. Deerfield Specialty Papers, Inc., 87
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`F.R.D. 53, 56 (E.D. Pa. 1980) (noting the public interest in having “private antitrust actions
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`proceed expeditiously” due to their “necessary part of the antitrust enforcement process,” a
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`consideration not applicable here, including due to the impending expiration of all of the asserted
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`patents), set forth five factors for consideration in the context of a request to stay litigation: “(1)
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`the interest of the plaintiffs in proceeding expeditiously with this litigation or any particular
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`aspect of it, and the potential prejudice to plaintiffs of a delay; (2) the burden which any
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`particular aspect of the proceedings may impose on defendants; (3) the convenience of the court
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`in the management of its cases, and the efficient use of judicial resources; (4) the interests of
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`persons not parties to the civil litigation; and (5) the interest of the public in the pending civil and
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`criminal litigation.”
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`As discussed extensively in ZOLL’s pre-hearing briefing, the first factor favors a stay
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`because Philips waited over ten years to bring this suit. Philips has never exhibited an interest in
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`2 See Blonder–Tongue, 402 U.S. at 350; Lear, Inc. v. Adkin, 395 U.S. 653 (1969); Compco Corp.
`v. Day–Brite Lighting, Inc., 376 U.S. 234, 237-38 (1964); Sears, Roebuck & Co. v. Stiffel Co.,
`376 U.S. 225, 230 (1964); see also Humanetics, Inc. v. Kerwit Med. Products, Inc., 1982 WL
`52202 (N.D. Tex. Apr. 8, 1982) aff'd, 709 F.2d 942 (5th Cir. 1983) (noting that a “series of
`Supreme Court cases has established that there is a significant public interest in abolishing
`worthless patents.”).
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`“proceeding expeditiously” with regard to the claims at issue in this case. Moreover, Philips
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`despite two rounds of briefing and a hearing have not articulated any unfair prejudice that would
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`befall it should the court grant the relief ZOLL seeks, let alone provided an explanation that
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`withstands basic scrutiny for its long delay in filing this suit.3
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`The second factor also favors a stay because, as discussed above and in ZOLL’s pre-
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`hearing briefing, ZOLL would have to formulate identical or nearly identical validity and
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`enforceability defenses in two courts for the six overlapping patents, and nearly identical
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`defenses for the two patents that do not overlap. This duplication is unnecessary, and unfairly
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`burdens ZOLL. A stay would help ameliorate this burden. Resco, 2010 WL 2331069 (finding
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`this factor favors a stay because “the court agrees with defendants’ position that substantial time,
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`effort, and resources may be saved by” staying action).
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`The third factor also favors ZOLL. As discussed above and in ZOLL’s previous briefing,
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`the Massachusetts Matter could moot all or substantial portions of this action, and at the very
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`least, the Massachusetts Matter should simplify and streamline the issues for the Court, and offer
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`a more fully develop record. This third factor therefore favors a stay. Bechtel Corp. v. Local
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`215, Laborers' Int'l Union of N. Am., AFL-CIO, 544 F.2d 1207, 1215 (3d Cir. 1976) (“a court
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`may hold one lawsuit in abeyance to abide the outcome of another which may substantially
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`affect it or be dispositive of the issues”); U.S. ex. rel. FLFMC, LLC v. William Bounds, LTD.,
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`2010 WL 2990725 (W.D. Pa. July 28, 2010) (noting that a “stay will promote judicial economy
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`because the outcome of Stauffer in the Court of Appeals for the Federal Circuit could be
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`3 Philips has to date identified only one reason for its long delay, viz., an alleged “recent surge”
`in LifeVest marketing expenditure and sales. As noted in the materials ZOLL presented at the
`hearing, however, the suit that Philips filed in 2010 was directed to products that had
`approximately the same sales volume as LifeVest at that time. Plainly Philips did not bring this
`suit in reaction to any sales or advertising “surge,” let alone a “recent surge.”
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`dispositive of the present matter”); Golden Quality, 87 F.R.D. at 57 (“[t]he mere possibility that
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`a substantial amount of the court's work, if undertaken now, may shortly prove to have been
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`unnecessary, cautions against undue haste in proceeding with this civil action”).
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`The fourth factor also favors ZOLL because absent a stay, non-parties may also have to
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`duplicate their efforts, efforts that would be for nothing if the Massachusetts Matter resolves this
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`matter by judgment, settlement, or otherwise. For instance, the listed inventors may have to
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`attend unnecessary depositions. ZOLL executives and engineers may be exposed to duplicative
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`efforts as well. Golden Quality, 87 F.R.D. at 58 (“the pressures of civil discovery are likely to
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`weigh most heavily on certain key managerial officials in defendant companies”). Allowing the
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`Massachusetts Matter’s liability phase to conclude would help reduce the risk of non-parties
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`wasting their time and energy. See id.
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`Finally, as discussed above in section III, there is no public interest in tolerating litigation
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`strategies that waste judicial resources. Thus, the fifth factor also favors ZOLL.
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`Dated: February 1, 2013
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`Respectfully submitted,
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`/s/ Henry M. Sneath
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`Henry M. Sneath (Pa. ID No. 40559)
`Robert L. Wagner (Pa. ID No. 308499)
`Joseph R. Carnicella (Pa. ID No. 200294)
`Picadio Sneath Miller & Norton, P.C.
`Four Gateway Center
`444 Liberty Avenue, Suite 1105
`Pittsburgh, PA 15222
`(412) 288-4000
`(412) 288-2405 (fax)
`
`Kurt L. Glitzenstein (pro hac vice)
`Adam J. Kessel (pro hac vice)
`Brian K. Wells (pro hac vice)
`Gauri M. Dhavan (pro hac vice)
`Fish & Richardson P.C.
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`Case 2:12-cv-01369-NBF Document 44 Filed 02/01/13 Page 9 of 10
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`One Marina Park Drive
`Boston, MA 02210
`(617) 542-5070
`(617) 542-8906 (fax)
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`Case 2:12-cv-01369-NBF Document 44 Filed 02/01/13 Page 10 of 10
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`CERTIFICATE OF SERVICE
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`I hereby certify that this document(s) filed through the ECF system will be sent
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`electronically to the following registered participants as identified on the Notice of Electronic
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`Filing (NEF) on this 1st day of February, 2013.
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`Dara A. DeCourcy
`George N. Stewart
`Zimmer Kunz
`600 Grant Street
`3300 USX Tower
`Pittsburgh, PA 15219
`
`David K. Mroz
`Michael Jakes
`Robert F. Shaffer
`Finnegan, Henderson Farabow, Garrett & Dunner, LLP
`901 New York Avenue, NW
`Washington, DC 20001
`
`Denise W. DeFranco
`Finnegan, Henderson Farabow, Garrett & Dunner, LLP
`Two Seaport Lane
`Sixth Floor
`Boston, MA 02210-2001
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`/s/ Henry M. Sneath
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`Henry M. Sneath, Esquire
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`Page 10 of 10
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