United States District Court, D. New Mexico
DENTSPLY SIRONA, INC, and TULSA DENTAL PRODUCTS LLC, doing business as Dentsply Sirona Endodontics, Plaintiffs,
EDGE ENDO, LLC, and U.S. ENDODONTICS, LLC Defendants.
MEMORANDUM OPINION AND ORDER GRANTING DEFENDANTS'
MOTION TO STAY PROCEEDINGS PENDING INTER PARTES
MATTER comes before the Court upon Defendants' Motion to
Stay Proceedings Pending Inter Partes Review, filed
July 10, 2018 (Doc. 147). Having reviewed
the parties' briefs and applicable law, the Court finds
that Defendants' Motion is well-taken and, therefore, is
GRANTED. This matter is therefore
STAYED pending inter partes review.
and Defendants design and sell endodontic drill files.
Plaintiffs filed this patent infringement case on October 10,
2017, alleging that Defendants infringed upon four published
Leahy-Smith America Invents Act (“AIA”), Pub.L.
No. 112-29, § 6(a), 125 Stat. 284, 299-304 (2011),
codified at 35 U.S.C. §§ 311-319 (2013), allows
parties to submit petitions for inter partes review
to the U.S. Patent Trademark Office, challenging the validity
of patent claims on certain limited grounds. The purpose of
inter partes review is to create a more efficient,
cost-effective alternative to litigation. Personal Web
Techs., LLC v. Apple Inc., 69 F.Supp.3d 1022, 1024 (N.D.
29 and July 3 2018, Defendants filed four petitions with the
U.S. Patent and Trademark Office for inter partes
review (“IPR”) by the Patent Trial and Appeal
Board (“PTAB”). Defendants' IPR petitions
challenge the patentability of every asserted patent claim in
this case, on multiple grounds, including prior public art.
Doc. 149, at ¶ 7-9.
PTAB will decide whether to institute inter partes
review in January 2019. Defendants filed this motion to stay
this case on July 10, 2018.
decision whether to grant a stay pending inter
partes review is made under the totality of the
circumstances. Universal Electronics, Inc. v. Universal
Remote Control, Inc., 943 F.Supp.2d 1028, 1031
(C.D.Cal.2013), cited in Wonderland Nursery Goods Co. v.
Baby Trend, Inc., 2015 WL 1809309, at *2 (C.D. Cal. Apr.
20, 2015). To determine whether to stay a case
pending inter partes review, district courts
typically consider “(1) whether discovery is complete
and whether a trial date has been set; (2) whether a stay
will simplify the issues in question and trial of the case;
and (3) whether a stay would unduly prejudice or present a
clear tactical disadvantage to the nonmoving party.
Digital Ally, Inc. v. Taser Int'l, Inc., No.
16-CV-2032-CM-TJJ, 2017 WL 1048351, at *2 (D. Kan. Mar. 20,
2017); Drink Tanks Corp. v.
Growlerworks, Inc., No. 3:16-cv-410-SI, 2016 WL 3844209,
at *2 (D. Or. July 15, 2016).
First Factor: Case Progress.
this first factor, courts typically consider “(1)
whether parties have engaged in costly expert discovery and
dispositive motion practice…. (2) whether the court
has issued its claim construction order…and (3)
whether the court has set a trial date.”
PersonalWeb Techs., LLC v. Apple Inc., 69 F.Supp.3d
1022, 1025-26 (N.D. Cal. 2014) (internal citations omitted);
Nichia Corp. v. Vizio, Inc., 2018 WL 2448098, at *2
(C.D. Cal. May 21, 2018) (courts consider timing issues such
as “whether discovery is complete, ” “the
status of claim construction, ” and “whether a
trial date has been set.”).
substantial and costly work remains in this case, including a
claim construction (“Markman”) hearing,
document production and review, all depositions, expert
discovery, and dispositive motion practice. See Surfcast,
Inc. v. Microsoft Corp., No. 2:12-cv-333-JDL, 2014 WL
6388489, at *2 (D. Me. Nov. 14, 2014) (focus is on volume of
work remaining before trial, not progress that has already
argue that much progress has already been made in this case.
When the motion to stay was filed, this case was pending for
nine months. Plaintiffs point out that significant discovery
had already occurred, and claim construction has been
briefed. Although progress has been made in this case, the
substantial and significant work remaining in this
case weighs toward granting the stay. See PersonalWeb
Techs., LLC v. Apple Inc., 69 F.Supp.3d 1022, 1026-27
(N.D. Cal. 2014) (focusing on cost of remaining work in
case); Microsoft Corp. v. Tivo Inc., No.
10-cv-00240-LHK, 2011 WL 1748428, at *6 (N.D. Cal. May 6,
2011) (finding that the stage of the litigation weighed in
favor of a stay where the parties had exchanged initial
disclosures, interrogatory responses, and document discovery,
but no depositions had been taken and no expert reports had
been exchanged); see also Digital Ally, Inc. v. Taser
Int'l, Inc., No. 16-CV-2032-CM-TJJ, 2017 WL 1048351,
at *2 (D. Kan. Mar. 20, 2017) (stay granted although case had
been litigated vigorously for over a year, including
significant discovery and claim construction statements.)
although claim construction has been briefed, that is not
dispositive. No. claim construction order has been issued.
These circumstances lean toward a stay. Nichia Corp. v.
Vizio, Inc., 2018 WL 2448098, at *2 (C.D. Cal. May 21,
2018) (even though claim construction briefs were filed,
significant litigation remained, including the
Markman hearing, expert discovery, and trial
preparation, which favored a stay); Wonderland Nursery
Goods Co., 2015 WL 1809309, at *3 (“although the
parties [had] submitted claim construction briefs, the
Markman hearing has not yet taken place and no
disputed claim terms have been construed by this
also argues that this case would likely be finished within 2
years of its start date, before any decision is issued on the
IPR petitions. Based on the parties' litigiousness, and
the complex issues before the Court in this case, the Court
disagrees that this case could be tried and finished before
an IPR decision is issued. This Court is in a southwest
border district with many criminal cases that take priority.
The Court finds that Plaintiffs' affidavit detailing the
average case completion time in this district is based on
outdated data (or data that will be outdated soon). The