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`EXHIBIT B
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`EXHIBIT B
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`Case 2:12-cv-03037-JPM-tmp Document 85 Filed 11/12/13 Page 1 of 18 PageID 1253
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TENNESSEE
`WESTERN DIVISION
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`ONE STOCKDUQ HOLDINGS, LLC,
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`
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`v.
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`BECTON, DICKINSON AND COMPANY,
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`)
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`)
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`Plaintiff/Counter-Defendant )
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`)
`) No. 2:12-cv-03037-JPM-tmp
`)
`)
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`Defendant/Counter-Claimant. )
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`ORDER GRANTING DEFENDANT’S RENEWED MOTION TO STAY
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`Before the Court is Defendant Becton, Dickinson and
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`Company’s (“Defendant”) Renewed Motion to Stay Litigation
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`Pending Inter Partes Review, filed October 4, 2013. (ECF No.
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`74.)
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`For the following reasons, Defendant’s Motion is GRANTED.
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`I. BACKGROUND
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`This case concerns the alleged infringement by Defendant of
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`Plaintiff One Stockduq Holdings, LLC’s (“Plaintiff”) patent.
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`(See ECF No. 1.) On December 3, 2012, Plaintiff filed a
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`Complaint against Defendant (id.), alleging that two of
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`Defendant’s products, the Nexiva catheter and the Insyte
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`AutoGuard catheter (the “Accused Products”), infringe United
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`States Patent No. 5,704,914 (the “‘914 patent”) — an IV catheter
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`placement assembly — owned by Plaintiff (id. ¶¶ 28-31).
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`Defendant filed its Answer and Counterclaims on January 23, 2013
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`(ECF No. 13), asserting that the “claims of the ‘914 patent are
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`invalid for failure to comply with the conditions of
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`patentability specified by 35 U.S.C. § 101 et seq.” (Id. at 5.)
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`After receiving Defendant’s Answer, Plaintiff served Defendant
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`with its First Set of Interrogatories and First Set of Requests
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`for Production of Documents. (See ECF Nos. 16-5, 16-6, 47-1.)
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`On February 19, 2013, Plaintiff filed its Answer to Defendant’s
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`counterclaims, denying every allegation. (ECF No. 28.)
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`On January 23, 2013, Defendant filed a Motion to transfer
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`this action to the United States District Court for the District
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`of Utah, pursuant to 28 U.S.C. § 1404(a). (ECF No. 14). On
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`February 11, 2013, Plaintiff filed its Response in Opposition.
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`(ECF No. 24.) On February 13, 2013, Defendant filed a Motion
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`for Leave to File a Reply (ECF No. 26), which the Court granted
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`on February 14, 2013 (ECF No. 27).
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`On January 30, 2013, Defendant filed a Motion to Stay
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`Discovery and Automatic Deadlines pending the resolution of the
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`Motion to Transfer Venue. (ECF No. 16.) Plaintiff opposed both
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`Motions. (See Certificate of Consultation, ECF No. 16-2; Pl.’s
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`Resp. in Opp’n, ECF No. 24.) Prior to the Court’s Order on the
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`Motion to Stay, Plaintiff served Defendant with its Initial
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`Infringement Contentions. (See ECF No. 47-2.) On February 13,
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`2013, the Court granted Defendant’s Motion to Stay. (ECF
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`No. 25.)
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`2
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`On March 18, 2013, the Court denied Defendant’s Motion to
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`Change Venue and lifted the stay. (ECF No. 31.) On April 1,
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`2013, Defendant provided Plaintiff with responses to the First
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`Set of Interrogatories and First Set of Requests for Production
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`of Documents. (See ECF No. 47-3.) On April 4, 2013, Defendant
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`served Plaintiff with its Initial Non-Infringement Contentions.
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`(See ECF No. 47-4.)
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`On April 4, 2013, Defendant filed a Petition for inter
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`partes review (the “Petition”) with the United States Patent and
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`Trademark Office (the “PTO”) challenging “the validity of all
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`the asserted claims” of the ‘914 patent. (Def.’s Mot. at 1, ECF
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`No. 36; Petition for Inter Partes Review, ECF No. 36-4.) In the
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`Petition, Defendant asserted that grounds for challenging the
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`validity of the ‘914 patent rests on “prior art that was not
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`before the PTO during the initial examination of the ‘914
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`[p]atent.” (Def.’s Mem. at 2, ECF No. 36-1; see also ECF No.
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`36-4 at PageID 279-80.)
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`On April 5, 2013, Defendant filed a Motion to Stay the
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`instant litigation pending the decision of the PTO on the
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`Petition for inter partes review. (ECF No. 36.) Defendant
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`asserted that the instant litigation would be moot should the
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`PTO grant Defendant’s requested relief. (Id. at 1.) On
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`April 22, 2013, Plaintiff filed its Response in Opposition,
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`arguing, inter alia, that Defendant’s “request for a stay is
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`3
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`premature.” (Pl.’s Resp. at 2, ECF No. 47.) At that time, the
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`PTO had not yet granted Defendant’s petition for inter partes
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`review. (Id.) On May 6, 2013, the Court entered an Order
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`denying Defendant’s Motion to Stay as premature because (1) “the
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`PTO has not yet granted Defendant’s Petition for reexamination
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`and it is possible that the PTO will never grant Defendant’s
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`Petition,” (2) “staying the case at this juncture could result
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`in an unnecessary delay . . . if the PTO does not grant
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`reexamination,” and (3) “this case is at an early stage of
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`litigation and, as a result, there is little risk of overlap
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`between the instant litigation and the PTO reexamination
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`process.” (ECF No. 53 at 3-4.)
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`On May 2, 2013, the parties exchanged initial disclosures.
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`(ECF Nos. 80 at 4; 80-1.) On May 27, 2013, Defendant served its
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`Initial Invalidity and Unenforceability Contentions. (ECF
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`Nos. 80 at 4; 80-2.) On June 3, 2013, the parties exchanged
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`their Preliminary Identification of Claim Terms to be Construed.
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`(ECF Nos. 80 at 4; 80-3.) On June 19, 2013, Defendant served
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`Plaintiff with its First Set of Interrogatories and Requests for
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`Production of Documents. (ECF Nos. 80 at 4; 80-4.) On June 20,
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`2013, Plaintiff served its Initial Validity and Enforceability
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`Contentions. (ECF Nos. 80 at 5; 80-5.) On the same day, the
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`Court held a Patent Scheduling Conference, which included a
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`4
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`technology tutorial. (Minute Entry, ECF No. 67; ECF No. 80 at
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`4.)
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`On June 27, 2013, Defendant amended its Preliminary
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`Identification of Claim Terms to be Construed. (ECF Nos. 80 at
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`5; 80-6.) On June 28, 2013, the parties held a meet-and-confer
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`regarding their Final Identification of Claim Terms to be
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`Construed. (ECF Nos. 80 at 5; 80-7.) On July 16, 2013, the
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`parties exchanged their Preliminary Claim Constructions and
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`Supporting Materials. (ECF Nos. 80 at 5; 80-8.) On July 22,
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`2013, Plaintiff served its Responses to Defendant’s First Set of
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`Interrogatories and Requests for Production of Documents. (ECF
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`Nos. 80 at 5; 80-9.) On August 30, 2013, the parties exchanged
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`their Final Constructions of the Claim Terms in Dispute and
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`Supporting Materials. (ECF Nos. 80 at 5; 80-10.) On
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`September 13, 2013, the parties filed their Opening Claim
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`Construction Briefs. (ECF Nos. 72, 73, 80 at 5.)
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`On October 1, 2013, the PTO granted Defendant’s petition
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`and instituted inter partes review of the ‘914 patent.
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`(Decision - Institution of Inter Partes Review, ECF No. 74-3.)
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`On October 4, 2013, Defendant filed the instant Renewed Motion
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`to Stay Litigation Pending Inter Partes Review. (ECF No. 74.)
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`On October 21, 2013, Plaintiff filed its Response in Opposition.
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`(ECF No. 80.) On October 28, 2013, Defendant filed a Motion for
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`Leave to File a Reply (ECF No. 81), which the Court granted on
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`5
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`October 28, 2013 (ECF No. 82.) On October 29, 2013, Defendant
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`filed its Reply. (ECF No. 83.) On October 30, 2013, a
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`telephonic hearing was held on Defendant’s Motion, at which both
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`parties were represented. (ECF No. 84.)
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`II. STANDARD
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`“The decision whether to grant a stay of a particular
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`action is within the inherent power of the Court and is
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`discretionary.” Ellis v. Merck & Co., Inc., No. 06–1005–T/AN,
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`2006 WL 448694 (W.D. Tenn. Feb. 19, 2006) (citation omitted).
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`“[T]he power to stay proceedings is incidental to the power
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`inherent in every court to control the disposition of the causes
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`on its docket with economy of time and effort for itself, for
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`counsel, and for litigants.” Gray v. Bush, 628 F.3d 779, 785
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`(6th Cir. 2010) (alteration in original) (quoting Landis v.
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`North American Co., 299 U.S. 248, 254 (1936)) (internal
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`quotation marks omitted).
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`“To determine whether a stay pending inter partes review is
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`appropriate, courts apply the same factors as determining
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`whether to stay a case pending reexamination.” Regents of Univ.
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`of Michigan v. St. Jude Med., Inc., No. 12-12908, 2013 WL
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`2393340, at *2 (E.D. Mich. May 31, 2013) (citation omitted). In
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`determining whether to stay litigation pending patent
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`reexamination by the PTO, courts generally consider the
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`following three factors: “(1) whether a stay would unduly
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`prejudice or present a clear tactical disadvantage to the non-
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`moving party; (2) whether a stay will simplify the issues in
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`question and trial of the case; and (3) whether discovery is
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`complete and whether a trial date has been set.” Procter &
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`Gamble Co. v. Team Techs., Inc., No. 1:12-cv-552, 2013 WL
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`4830950, at *2 (S.D. Ohio Sept. 10, 2013) (quoting Tdata Inc. v.
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`Aircraft Technical Publishers, Nos. 2:03–cv–264, 2:04–cv–1072
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`(S.D. Ohio Jan. 4, 2008)). “Courts have inherent power to
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`manage their dockets and stay proceedings, including the
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`authority to order a stay pending conclusion of a PTO
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`reexamination.” Ethicon Inc. v. Quigg, 849 F.2d 1422, 1426–27
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`(Fed. Cir. 1988) (citation omitted).
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`III. ANALYSIS
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`
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`Defendant argues that all three factors favor staying this
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`case pending the outcome of the PTO inter partes review. These
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`three factors are addressed in turn.
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`A. Undue Prejudice or Clear Tactical Disadvantage
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`Defendant argues that the inter partes review process will
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`not prejudice Plaintiff. (Def’s Mem. at 8, ECF No. 74-1.)
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`First, Defendant asserts that Plaintiff “cannot credibly claim
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`any undue prejudice from the delay of an [inter partes review]
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`proceeding because of its own delay in seeking to enforce its
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`patent rights.” (Id.) Defendant asserts that Plaintiff has
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`already caused delay by waiting until December 2012 to file an
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`7
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`infringement suit against Defendant because the ‘914 patent was
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`issued in 1998 and Defendant began manufacturing the accused
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`Nexiva catheter in approximately 2006. (Id.) Defendant argues
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`that although the inter partes review “may cause some
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`predictable delay, [that] in and of itself, is not reason to
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`deny a stay pending PTO review.” (Id.) Defendant asserts that
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`delay from the inter partes review alone is not itself a reason
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`to find prejudice against Plaintiff. (Id. (citing DSW Inc. v.
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`Shoe Show, Inc., No. 1:11 CV 1797, 2012 WL 2994193, at *2 (N.D.
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`Ohio July 20, 2012)) (internal quotation marks omitted).)
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`Second, Defendant contends that Plaintiff cannot “credibly
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`claim undue prejudice from [Defendant’s] continuing to sell the
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`accused products during a period of stay.” (Id.) According to
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`Defendant, Plaintiff does not manufacture a product that
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`competes with the Accused Products and has not sought a
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`preliminary injunction in this case. (Id.) In support of this
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`proposition, Defendant cites Semiconductor Energy Lab. Co., Ltd.
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`v. Chimei Innolux Corp., No. SACV 12-21-JST(JPRx), 2012 WL
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`7170593, at *4 (C.D. Cal. Dec. 19, 2012), which held that there
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`was no undue prejudice to the non-moving party in part because
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`the non-moving party did not seek a preliminary injunction and
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`the parties were not direct competitors. Moreover, Defendant
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`argues that the fact that Plaintiff “seeks to license the ‘914
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`8
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`patent militates against any undue prejudice from granting a
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`stay.” (Def.’s Mem. at 9, ECF No. 74-1.)
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`Finally, Defendant argues that the inter partes review
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`process will not prejudice Plaintiff and instead will promote
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`litigation efficiency because if the asserted claims of the ‘914
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`patent are found invalid by the PTO, “then there is no
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`infringement to adjudicate.” (Id.)
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`
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`Plaintiff argues that Defendant has “failed to provide a
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`good reason for its significant delay in requesting an [inter
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`partes review], which militates toward a finding that
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`[Defendant] is seeking a tactical advantage in this case.”
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`(Pl.’s Resp. at 9, ECF No. 80.) Plaintiff asserts that
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`Defendant’s reason for “trying to remove this case from this
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`Court for the third time is to gain a tactical advantage in this
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`litigation.” (Id. (citation omitted).)
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`If the case is stayed pending PTO review of the ‘914
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`patent, Plaintiff asserts that the delay inherent in the PTO
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`process will cause Plaintiff undue prejudice. (Id. at 10.) In
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`support of this assertion, Plaintiff states that the “tactical
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`advantage” that Defendant seeks will cause prejudice to
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`Plaintiff by “causing further delay, increasing costs, and
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`jeopardizing the integrity of evidence and witness testimony.”
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`(Id.) Plaintiff contends that, “[a]t a minimum, Defendant
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`should have filed its petition for [inter partes review] before
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`9
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`seeking a transfer to the District of Utah, a court where the
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`median time for a case to proceed to trial is 41.9 months.”
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`(Id.) In support of this assertion, Plaintiff contends that
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`“[c]ourts have found that ‘[a] request for reexamination made
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`well after the onset of litigation followed by a subsequent
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`request to stay may lead to an inference that the moving party
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`is seeking an inappropriate tactical advantage.’” (Id. (quoting
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`Belden Techs. Inc. v. Superior Essex Commc’ns. LP, No. 08-63-
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`SLR, 2010 WL 3522327, at *4 (D. Del. Sept. 2, 2010) (denying a
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`defendant’s motion to stay pending inter partes
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`reexamination)).) Plaintiff also relies on Imagevision.net,
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`Inc. v. Internet Payment Exchange, Inc. in support of this
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`assertion. (Id. (citing Imagevision.net, Inc. v. Internet
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`Payment Exchange, Inc., No. 12-054-GMS-MPT, 2013 WL 663535, at
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`*5, 2013 WL 663535 (D. Del. Feb. 25, 2013) (report and
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`recommendation from magistrate judge).)
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`
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`Given that the Petition is granted, the PTO must complete
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`its review within twelve to eighteen months. See 35 U.S.C.
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`§ 316(a)(11); 37 C.F.R. § 42.100(c). While a stay to allow the
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`inter partes review to proceed will undeniably delay the instant
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`litigation, delay based on the inter partes review process alone
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`is not sufficient to demonstrate undue prejudice to the non-
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`moving party. See DSW Inc., 2012 WL 2994193, at *2 (citing
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`Allied Erecting & Dismantling Co., Inc. v. Genesis Equip. &
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`10
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`Mfg., Inc., No. 4:08CV589, 2010 WL 3239001, at *2 (N.D. Ohio
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`Aug. 16, 2010)) (discussing delay due to inter partes
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`reexamination). To the extent that Plaintiff suffers any
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`prejudice as a result of the delay, the prejudice is outweighed
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`by the benefits of the stay, including the benefit of the Court
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`having the record of the inter partes review proceeding, which
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`will assist the Court in “reducing the complexity and length of
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`the litigation.” Lectrolarm Custom Servs., Inc. v. Vicon
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`Indus., Inc., No. 03-2330 MA/A, 2005 WL 2175436, at *2 (W.D.
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`Tenn. Sept. 1, 2005). Finally, while Plaintiff asserts that the
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`delay will increase the “risk of certain evidence being lost and
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`will put additional strain on the memories of potential
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`witnesses with relevant knowledge” (Pl.’s Resp. at 11, ECF No.
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`80), Plaintiff has not demonstrated that this is more of a
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`concern in this case than in other cases.
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`The Court finds Plaintiff’s reliance on Belden Technologies
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`Inc. and Imagevision.net, Inc. inapposite. In Belden
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`Technologies Inc., the court found that petitions for inter
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`partes reexamination were requested seventeen to twenty months
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`after the plaintiff filed suit for patent infringement and that
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`the defendant had reveal its desire to stay litigation “a mere
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`eleven days before trial.” 2010 WL 3522327, at *2. In
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`contrast, Defendant in the instant case has filed a petition for
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`inter partes review four months after commencement of the
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`11
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`instant action, and trial is currently set for August 2014. In
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`Imagevision.net, Inc., the defendant requested inter partes
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`reexamination almost five months after plaintiff initiated the
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`action and filed a motion to stay three months after it answered
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`the complaint. The Imagevision court found that “[d]espite the
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`timing of the reexamination and stay requests, they do not
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`indicate an attempt to gain a tactical advantage, particularly
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`in light of the average time of approximately four to six months
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`for a scheduling order to be issued in patent matters.” 2013 WL
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`663535, at *5. Similarly, this Court finds that the timing of
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`Defendant’s petition four months after the filing of the
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`Complaint and timing of Defendant’s stay requests does not
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`indicate an attempt to gain a tactical advantage.
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`Accordingly, the Court finds that this factor weighs in
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`favor of granting a stay.
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`B. Simplification of Issues
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`
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`Defendant argues that staying this case pending a final
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`written decision of the ‘914 patent from the Patent Trial and
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`Appeal Board will simplify the issues at trial and preserve
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`judicial resources. (Def.’s Mem. at 10, ECF No. 74-1.)
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`Defendant states that the “PTO granted [Defendant’s] [inter
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`partes review] petition as to each and every one of
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`[Plaintiff’s] asserted claims.” (Id.) As such, “a stay will
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`avoid wasting the Court’s (and parties’) resources in the event
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`12
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`that the Patent Trial and Appeals Board (“PTAB”) invalidates the
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`asserted claims.” (Id.) Moreover, Defendant contends “the
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`PTAB’s findings will simplify any subsequent litigation
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`regardless of whether the asserted claims are ultimately
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`invalidated.” (Id.)
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`
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`Defendant argues that “there is a strong likelihood that at
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`least some of the ‘914 patent claims subject to [inter partes
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`review] will be invalidated or amended.” (Id. at 11) In
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`support of this hypothesis, Defendant asserts that under the old
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`inter partes reexamination process, claims were “cancelled or
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`narrowed . . . in 82% of the reexaminations” as of September 30,
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`2012. (Id. at 11 (citing U.S. Patent & Trademark Office, Inter
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`Partes Reexamination Filing Data – Sept. 30, 2012, available at
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`http://www.uspto.gov/patents/stats/inter_parte_historical_stats_
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`roll_up_EOY2012.pdf).) Defendant also cites to one district
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`court’s discussion finding that “‘[i]f the PTO cancelled at
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`least some of the challenged claims in 89% of inter partes
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`reexaminations, it seems likely that this percentage will be
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`higher in inter partes reviews, because the inter partes review
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`requests granted by the PTO must satisfy a more restrictive
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`standard.’” (Id. at 11-12 (quoting Universal Elecs., Inc. v.
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`Univ. Remote Control, Inc., No. SACV 12-00329 AG(JPRx) 2013 WL
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`1876459, at *4 (C.D. Cal. May 2, 2013)).)
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`13
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`Finally, Defendants assert that the stay will preserve
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`judicial resources because Defendants will not be able to offer
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`any argument to this Court that “it raised or reasonably could
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`have raised” in the inter partes review, thus narrowing the
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`scope of this litigation. (Id. at 12.)
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`
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`Plaintiff argues that inter partes review will not simplify
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`the issues in this case because the following issues in this
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`case cannot be addressed by the PTO process: “(1) [Plaintiff’s]
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`claim for infringement and damages; (2) [Defendant’s] defenses
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`under 35 U.S.C. §§ 101 and 112; and (3) [Defendant’s] equitable
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`defenses, such as laches, estoppel, license and waiver.” (Pl.’s
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`Resp. at 12, ECF No. 80.) Plaintiff further argues that
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`Defendant’s claim that “at least some of the ‘914 patent claims
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`. . . will be invalidated or amended” is highly speculative and
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`does not demonstrate that the issues before the Court will be
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`simplified. (Id. at 13 (quoting ECF No. 74-1 at 11).)
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`
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`Plaintiff’s argument is unavailing. Given that review is
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`granted, the fact that some “claims may survive without
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`amendment does not mean that the issues will not be
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`significantly streamlined.” Progressive Cas. Ins. Co. v. Safeco
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`Ins. Co. of Ill., Nos. 1:10CV01370, 1:11CV00082, 1:12CV01068,
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`1:12CV01070, 2013 WL 1662952, at *5 (N.D. Ohio Apr. 17, 2013).
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`Amendment of any claim could impact the litigation presently
`
`before the Court, and a “majority of patents which have been
`
`
`
`14
`
`
`
`Case 2:12-cv-02829-JPM-tmp Document 68-3 Filed 12/06/13 Page 16 of 19 PageID 677
`Case 2:12-cv-03037-JPM-tmp Document 85 Filed 11/12/13 Page 15 of 18 PageID 1267
`
`reexamined have either had all claims canceled or changes made
`
`to the claims.” DSW Inc., 2012 WL 2994193, at *2. Even if all
`
`claims are confirmed by the PTO, the record of the inter partes
`
`review will assist this Court in reducing the length and
`
`complexity of this litigation and will limit what issues are
`
`left to be resolved by this Court. See Lectrolarm, 2005 WL
`
`2175436, at *2-3; Ralph Gonnocci Revocable Living Trust v. Three
`
`M Tool & Mach., Inc., No. 02-74796, 2003 WL 22870902, at *2
`
`(E.D. Mich. Oct. 7, 2003).
`
`Accordingly, the Court finds that this factor weighs in
`
`favor of granting a stay.
`
`C. Stage of Litigation
`
`
`
`Defendant argues that staying this case pending a final
`
`determination of the ‘914 patent by the PTAB is warranted
`
`because “there is considerable risk of overlap between the
`
`litigation and the PTO proceedings if the case is not stayed.”
`
`(Def.’s Mem. at 13, ECF No. 74-1.) Defendant states that “the
`
`PTO provided claim constructions of select terms, which overlap
`
`with terms proposed to the Court for construction.” (Id.)
`
`According to Defendant, the inter partes review proceeding “will
`
`create important file history evidence to be considered by the
`
`Court if the asserted claims remain viable after [inter partes
`
`review] and the Court engages in claim construction.” (Id.)
`
`Defendant asserts that the “PTO will likely render a decision on
`
`
`
`15
`
`
`
`Case 2:12-cv-02829-JPM-tmp Document 68-3 Filed 12/06/13 Page 17 of 19 PageID 678
`Case 2:12-cv-03037-JPM-tmp Document 85 Filed 11/12/13 Page 16 of 18 PageID 1268
`
`the validity of the asserted claims shortly after trial, which,
`
`if the claims were held invalid in the [inter partes review],
`
`could moot the results of the trial.” (Id.)
`
`As to the status of the case, Defendant argues, inter alia,
`
`that “the parties have engaged in some discovery” and that “[n]o
`
`depositions have yet been noticed.” (Id.) Defendant asserts
`
`that courts have granted stays pending inter partes review in
`
`cases at later stages of litigation than the present case. (Id.
`
`at 13-14); see, e.g., Software Rights Archive, LLC v. Facebook,
`
`Inc., Nos. C-12-3970 RMW, C–12–3971 RMW, C–12–3972 RMW, 2013 WL
`
`5225522, at *3 (N.D. Cal. Sept. 17, 2013) (granting stay where
`
`the plaintiff had produced over 150,000 pages of documents,
`
`propounded interrogatories, and served preliminary infringement
`
`contentions and invalidity contentions); Semiconductor Energy,
`
`2012 WL 7170593, at *3 (granting a motion to stay pending inter
`
`partes review, where the inter partes review petition was filed
`
`ten months after the complaint was filed and three to four
`
`months after infringement contentions were filed).
`
`
`
`Plaintiff argues that the stage of this proceeding weighs
`
`against a stay because “[t]his case has been heavily litigated.”
`
`(Pl.’s Resp. at 14, ECF No. 80.) In support of its position,
`
`Plaintiff argues that “[c]ourts have denied requests for a stay
`
`when, as in this case, the litigation has progressed
`
`
`
`16
`
`
`
`Case 2:12-cv-02829-JPM-tmp Document 68-3 Filed 12/06/13 Page 18 of 19 PageID 679
`Case 2:12-cv-03037-JPM-tmp Document 85 Filed 11/12/13 Page 17 of 18 PageID 1269
`
`significantly toward trial, particularly when claim construction
`
`efforts are well underway.” (Id. (citations omitted).)
`
`Plaintiff states that “[t]he parties have been litigating
`
`for over ten months.” (Id. at 15.) During that time, the
`
`parties have exchanged significant discovery; nearly 15,000
`
`pages of documents have been produced. (Id. at 14-15.) The
`
`parties have also exchanged Initial Infringement Contentions,
`
`Initial Non-Infringement Contentions, Validity and
`
`Enforceability Contentions, and Invalidity and Unenforceability
`
`Contentions. (Id. at 15.)
`
`Plaintiff states that the parties have held their Rule
`
`26(f) Scheduling Conference and their Local Patent Rule 2.1(b)
`
`Planning Meeting. (Id.) Plaintiff also notes that the Court
`
`has held a Patent Scheduling Conference, which included a
`
`technology tutorial. (Id.) Moreover, “claim construction is
`
`fully briefed and set for resolution.” (Id. at 14-15 (citing
`
`ECF Nos. 72, 73, 77, 78).)
`
`
`
`The Court does not agree with Plaintiff that a stay in this
`
`case is inappropriate. First, Defendant has asserted specific
`
`prior art that it says was not considered by the PTO when it
`
`originally assessed the ‘914 patent application. If it is true
`
`that this prior art was not previously considered by the PTO,
`
`Defendant has a reasonable likelihood of success on either
`
`invalidating or amending Plaintiff’s claims. Second, the PTO
`
`
`
`17
`
`
`
`Case 2:12-cv-02829-JPM-tmp Document 68-3 Filed 12/06/13 Page 19 of 19 PageID 680
`Case 2:12-cv-03037-JPM-tmp Document 85 Filed 11/12/13 Page 18 of 18 PageID 1270
`
`must issue a final determination, at the latest, within twelve
`
`months granting the petition for inter partes review. See 35
`
`U.S.C. § 316(a)(11); 37 C.F.R. § 42.100(c). Accordingly, the
`
`Court finds that a stay would not be inappropriate in this case.
`
`
`
`In summary, all of the relevant factors favor staying this
`
`case pending a final written decision on the inter partes review
`
`of the ‘914 patent.
`
`IV. CONCLUSION
`
`
`
`For the foregoing reasons, Defendant’s Motion to Stay (ECF
`
`No. 74) is GRANTED. All proceedings are hereby STAYED pending a
`
`final written decision from the PTAB. The parties are also
`
`ORDERED to file the final written decision of the PTAB within
`
`three (3) days of issuance, and the parties are further ORDERED
`
`to submit a proposed amended expedited scheduling order within
`
`ten (10) days of the PTAB’s final written decision.
`
`The parties may move for a lift of the stay for good cause
`
`prior to the completion of inter partes review by the PTO.
`
`IT IS SO ORDERED this 12th day of November, 2013.
`
`
`
`
`
`
`
`
`
`/s/ Jon P. McCalla________
`JON P. McCALLA
`U.S. DISTRICT JUDGE
`
`18
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