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Integrated Sensing Systems, Inc. v. Abbott Laboratories

United States District Court, E.D. Michigan, Southern Division

August 12, 2019

INTEGRATED SENSING SYSTEMS, INC., Plaintiff,
v.
ABBOTT LABORATORIES, ABBOTT LABORATORIES, INC., ST. JUDGE MEDICAL, LLC, and CARDIOMEMS LLC, Defendants.

          ORDER GRANTING MOTION TO STAY PENDING INTER PARTES REVIEW [#28] AND STAYING THE CASE

          DENISE PAGE HOOD, UNITED STATES DISTRICT JUDGE

         I. INTRODUCTION

         On January 4, 2019, Plaintiff filed the instant action against Defendants, alleging that Defendants' CardioMEMS HF System infringes Plaintiff's patent, U.S. Patent No. 6, 926, 670 (the “'670 patent”). After Defendants filed a Motion to Dismiss, Plaintiff filed an Amended Complaint, to which Defendants filed a second Motion to Dismiss. Plaintiff then filed a Motion for Leave to Seek Contested Venue Discovery, and Defendants filed a Motion to Stay Pending Inter Partes Review of the '670 patent (“Motion to Stay”). ECF No. 28. The Motion to Stay has been fully briefed. The issues in the Motion to Stay have been adequately presented in the parties' briefs, such that oral arguments are not necessary. See E.D. Mich. L.R. 7.1(f)(2). For the reasons set forth below, the Court GRANTS the Motion to Stay.

         II. BACKGROUND

         For purposes of deciding the Motion to Stay, the Court adopts Plaintiff's version of the background of this matter, as follows. Utilizing the '670 patent issued on August 9, 2005, by 2011, Plaintiff had developed wireless MEMS implantable hemodynamic monitoring devices under the brand name TITAN, and sometimes referred to as the TITAN Wireless Implantable Hemodynamic Monitoring (“TITAN WIHM”) system. Plaintiff performed a series of preclinical studies using its patented TITAN WIHM system during the development and testing of its technology in the U.S. and Europe, and Plaintiff performed human clinical trials in Europe using its patented TITAN WIHM system starting in June 2013.

         Plaintiff claims its human clinical trials exhibited promising results for the potential prevention of complications after cardiac surgery and for the long-term management of patients with congestive heart failure and other chronic cardiac diseases. Plaintiff also claims that the trials showed that the TITAN WIHM devices could be safely, easily, and rapidly implanted, while reliably working with a monitor to record physiologic parameters of the patient both at home and at medical facilities. Plaintiff completed the first part of its clinical trials in 2015, with the final report following in 2017.

         Plaintiff presented the results of its clinical trials at numerous conferences in the U.S. and around the world, and entered into discussions regarding Plaintiff's WIHM and MEMS patented technology with Defendant Abbott Laboratories (“Abbott”) at the end of 2014. In 2014 and 2015, Abbott did not have a competing heart failure monitoring system and showed interest Plaintiff's WIHM and MEMS technology. During that time, Plaintiff focused on trying to negotiate with Abbott. About the same time (in 2014, several years prior to Abbott's acquisition of Defendant St. Jude Medical, LLC (“St. Jude”) in early 2017), St. Jude had just purchased CardioMEMS LLC.

         On January 4, 2017, Abbott finalized its acquisition of St. Jude for $25 billion, including St. Jude's subsidiary, CardioMEMS LLC (“CardioMEMS”), and the CardioMEMS HF System became part of Abbott's product portfolio. Accordingly, Abbott went from a potential partner to a potential competitor in the implantable wireless heart failure monitor device market. Plaintiff engaged in further discussions with Abbott during 2017 regarding Plaintiff's patented technology, even after Plaintiff completed its final report on clinical studies for its TITAN WIHM device in Europe. Those discussions did not result in any transaction.

         On March 29, 2018, Abbott announced the so-called GUIDE-HF large-scale clinical trial involving over 3, 500 patients using the CardioMEMS HF System, including patients at Providence Hospital in Southfield, Michigan. At this time, Plaintiff is in the process of obtaining its CE Mark certification to sell its TITAN WIHM devices in Europe, which Plaintiff expects to take about 6-8 months. If Plaintiff obtains that certification, both Plaintiff and Abbott will be manufacturing and shipping competing products from the U.S. for sale in Europe.

         On January 4, 2019, Plaintiff filed its original Complaint against Defendants, but Plaintiff did not immediately serve the Complaint on Abbott so that the parties could engage in further licensing and/or settlement talks. When efforts to resolve the case early were unsuccessful, Plaintiff served the Complaint on February 14, 2019. After Plaintiff agreed to give Defendants additional time to respond to the Complaint, Defendants moved to dismiss the Complaint for improper venue on April 6, 2019. On April 23, 2019, Plaintiff filed an Amended Complaint, adding Defendant Abbott Laboratories Inc. (“ALI”) as a defendant and included new venue-related factual allegations.

         On May 7, 2019, Defendants filed a motion to dismiss the Amended Complaint. Plaintiff requested venue discovery and as a part of the meet and confer process, Abbott agreed to provide some, but not all, of the requested venue discovery. On May 28, 2019, the parties filed a joint stipulation regarding venue-related discovery and a briefing schedule to Defendants' motion to dismiss, which the Court entered on June 5, 2019. The parties fully briefed the contested venue discovery, and the Court set a hearing of August 14, 2019 to resolve the remaining disputed venue discovery.

         On July 15, 2019, Defendant filed its two petitions for Inter Partes Review (“IPR”), each challenging the '670 patent. Plaintiff has three months from the Notice of Filing Date Accorded to submit its Patent Owner preliminary response (October 26, 2019). The United States Patent and Trial Appeal Board (“PTAB”) must then issue a decision on institution of Defendants' IPR petitions three months after Plaintiff's Patent Owner preliminary response. 35 U.S.C. § 314(b)(1). The PTAB is expected to issue a decision on whether to institute Defendants' IPR petitions on or about January 26, 2020.

         III. ANALYSIS

         District courts “have the broad discretion to determine whether a stay is appropriate” pending the institution of an IPR proceeding. Cequent Performance Prods., Inc. v. Hopkins Mfg. Corp., 2015 WL 1510671, at *1 (E.D. Mich. Apr. 1, 2015) (citation omitted). A court considers three factors in deciding whether to stay an action pending the institution of an IPR: (1) the stage of the litigation, (2) whether the stay will simplify the issues or present a clear tactical disadvantage to the nonmoving party, and (3) whether a stay would unduly prejudice the nonmoving party. See, e.g., Magna Elecs., ...


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