Case 1:20-cv-00692-LY Document 247 Filed 05/31/22 Page 1 of 4
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`AUSTIN DIVISION
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`FILED
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`MAY 312022
`CLERIc, U 8. DISTT CURT
`STERN DiSTRlxA$
`DEP*? &ERK
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`RAVGEN, INC.,
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`PLAINTIFF,
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`V.
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`NATERA, INC. AND NSTX, INC.,
`DEFENDANTS.
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`CAUSE NO. 1:20-CV-692-LY
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`ORDER ON MOTION TO STAY
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`Before the court are Defendants' Motion to Stay Pending Ex Parte Reexamination of the
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`Asserted Patents filed September 24, 2021 (Doe. #100); Plaintiff's Opposition to Defendants'
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`Motion to Stay Pending Ex Parte Reexamination of the Asserted Patents filed October 1, 2022
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`(Doe. #103); Defendants' Reply in Support of their Motion to Stay Pending Ex Parte
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`Reexamination of the Asserted Patents filed October 8, 2021 (Doe. #124); Natura's Status
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`Report Regarding Proceedings at the United States Patent and Trademark Office filed December
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`17, 2021 (Doe. #197); Supplemental Notice Regarding Defendants' Motion to Stay Pending Ex
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`Parte Reexamination of the Asserted Patents filed February 4, 2022 (Doe. #23 5); Plaintiff's
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`Letter Regarding Defendants' Motion to Stay Pending Ex Parte Reexamination of the Asserted
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`Patents filed February 11, 2022 (Doe. #242); Supplemental Notice Regarding Defendants'
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`Motion to Stay Pending Ex Parte Reexamination of the Asserted Patents filed March 21, 2022
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`(Doe. #244); and Plaintiff's Response
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`to Defendants' Supplemental Notice Regarding
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`Defendants' Motion to Stay Pending Ex Parte Reexamination of the Asserted Patents filed
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`March 24, 2022 (Doe. #245). Having reviewed the motion, response, reply and related
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`supplements and responses, the applicable law, and entire case file, the court will grant
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`Defendants' motion to stay.
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`Case 1:20-cv-00692-LY Document 247 Filed 05/31/22 Page 2 of 4
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`This is a civil action for infringement of United States Patent Nos. 7,727,720 (the "720
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`Patent") and 7,332,277 (the "277 Patent") (collectively the "Asserted Patents"). Defendants
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`have informed the court that the United States Patent and Trademark Office ("USPTO") has
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`instituted three ex parte reexaminations and seven inter partes reviews ("IPRs') on the
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`the
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`Asserted Patents. Plaintiff petitioned the USPTO to stay the reexaminations of the Asserted
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`Patents until the conclusion of the IPRs. Defendants move to stay this case pendingat the very
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`earliestthe conclusion of the IPR proceedings expected no later than October 2022.
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`Courts have the inherent power to manage their dockets, including the authority to order
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`a stay. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1426-27 (Fed. Cir. 1988). A party seeking a stay
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`bears the burden of showing that a stay is appropriate. MiMedx Grp., Inc. v. Tissue Transplant
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`Tech. Ltd, No. SA-14-CV-719, 2015 WL 11573771, at *2 (W.D. Tex. Jan. 5, 2015). Courts
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`generally consider three factors when determining whether to stay patent litigation in light of
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`IPR proceedings:
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`(1) whether a stay would unduly prejudice or present a clear tactical
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`disadvantage to the nonmoving party; (2) whether a stay will simplify the issues in question; and
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`(3) the status of the litigation at the time a stay is requested. Id. In determining whether to stay
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`court proceedings pending resolution of IPR proceedings, courts usually evaluate the totality of
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`the circumstances in the particular case before them. Landis v. North Am. Co., 299 U.S. 248,
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`254 (1936) ("The power to stay proceedings is incidental to the power inherent in every court to
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`control the disposition of the causes on its docket with economy of time and effort for itself, for
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`counsel, and for litigants.")
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`First, the court finds that a stay would not unduly prejudice or present a clear tactical
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`disadvantage to Plaintiff. The court agrees with Defendants that a stay pending review at the
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`2
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`Case 1:20-cv-00692-LY Document 247 Filed 05/31/22 Page 3 of 4
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`USPTO would not present a significant delay. The court is unpersuaded by Plaintiff's argument
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`that a stay would constitute undue prejudice. Plaintiffs did not file suit against Defendants for
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`more than seven years after the accused products at issue were first launched. Additionally,
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`although Plaintiff argues that it is a competitor with Defendants, Plaintiff does not seek lost
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`profits or preliminary-injunctive relief from the court in this case. See VirtualAgility Inc. v.
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`Salesforce. corn, Inc., 759 F. 3d 1307, 1319 (Fed. Cir. 2014) (noting that plaintiff's choice not to
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`request preliminary injunction weighed against claim that plaintiff was unduly prejudiced).
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`Therefore, the court concludes that the first factor weighs in favor of a stay.
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`Second, the court finds that a stay will simplify the issues in question in this case. The
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`IPR decisions may significantly streamline the issues before the court. See NFC Tech. LLC v.
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`HTC Am., Inc., No. 2:13-CV-l058-WCB, 2015 WL 1069111, at *4 (E.D. Tex. Mar. 11, 2015)
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`(noting that "the prospect that the inter partes review proceeding will result in simplification of
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`the issues" is "the most important factor bearing on whether to grant a stay"). The court
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`concludes that the second factor weighs in favor of a stay.
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`Third, the court finds that the status of the litigation weighs in favor of a stay. Although
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`a claims-construction order has been rendered in the case, the parties continue to dispute the
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`construction provided in the court's Supplemental Claims Construction Order (Doc. #176).
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`In
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`addition, no scheduling order has been rendered or trial date scheduled after claims construction
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`following the transfer of the case to this court. The court therefore concludes that the third factor
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`weighs in favor of a stay.
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`Having considered the totality of the circumstances, the court finds that all three factors
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`weigh in favor of a stay and will grant Defendants' motion.
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`3
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`Case 1:20-cv-00692-LY Document 247 Filed 05/31/22 Page 4 of 4
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`IT IS THEREFORE ORDERED that Defendants' Motion to Stay Pending Ex Parte
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`Reexamination of the Asserted Patents filed September 24, 2021 (Doc. #100) is GRANTED.
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`IT IS FURTHER ORDERED that this action is STAYED pending further order of the
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`court.
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`IT IS FINALLY ORDERED that the parties shall file a Status Report on or before
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`November 1, 2022, advising the court on any action taken by the Patent Trial and Appeal Board
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`related to the Asserted Patents.
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`SIGNED this
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`day
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`2022.
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`ED STATES DISTRICT JUDGE
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`4
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