Richards Layton & Finger
 

Magistrate Judge Fallon Denies Motions to Stay

June 14, 2018

In Boston Scientific Corp. v. Edwards Lifesciences Corp., No. 16-275-JFB-SRF (Apr. 20, 2018), Magistrate Judge Fallon denied without prejudice the defendants’ motion to stay the plaintiff’s patent infringement claim pending the final resolution of IPR proceedings. The PTAB had issued a final written decision invalidating the patent asserted by the plaintiff. The plaintiff opposed the motion to stay, and argued in the alternative that the defendants’ infringement counterclaims should also be stayed if the Court were to grant the defendants’ motion.

In denying the stay, the Court noted the risk that the Federal Circuit would reverse the PTAB’s decision on appeal and the uncertainty as to whether inter partes review proceedings would be found unconstitutional in the then-pending Oil States case. The potential for simplification weighed in favor of a stay, but only slightly, since the defendants’ patent infringement claims would proceed to trial regardless, as the Court noted. The stage of the proceedings, with trial a little over three months away, weighed heavily against a stay. Finally, Judge Fallon found that the plaintiff could potentially suffer prejudice from not having its claims tried alongside the defendants’ claims, and the defendants could suffer prejudice from a delay of the entire case. For these reasons, the Court refused to issue any stay.

Key Point: In denying the motion to stay, Magistrate Judge Fallon noted that the Court disfavors partial stays, which would increase the likelihood that two trials would be required to bring the litigation to a close.