United States District Court, E.D. Michigan, Southern Division
ORDER GRANTING MOTION TO STAY PENDING INTER PARTES
REVIEW [#28] AND STAYING THE CASE
PAGE HOOD, UNITED STATES DISTRICT JUDGE
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.
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.
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
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.
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.
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.
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.
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.
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.
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., ...