Magistrate Judge Burke recently considered defendant’s motion to stay plaintiff’s patent infringement litigation pending the USPTO’s reexamination of the patents-in-suit. SenoRX, Inc. v. Hologic, Inc., C.A. No. 12-173-LPS-CJB (D. Del. Jan. 11, 2013). The patents-in-suit relate to “balloon brachytherapy device[s],” which are used in the treatment of breast cancer. Id. at 1-2. Defendant filed requests for reexamination following the entry of the Court’s scheduling order and while discovery progressed in the case. See id. at 2-3. Defendant then filed a motion to stay pending resolution of the reexamination proceedings. Id. at 3. In weighing the relevant factors to determine whether a stay was appropriate, the Court concluded that “the prejudice factor decidedly weigh[ed] against a stay.” Id. at 19.
“With nearly all of the asserted claims currently subject to a non-final rejection and before the PTO,” the potential for simplification of issues favored a stay, “though not strongly so” because of the “lack of complete (though not insignificant) overlap of the issues to be addressed in the PTO and in the District Court.” Id. at 7, 8. The current status of the litigation also favored a stay but that was “tempered” by the fact that “the case was not in its infancy” when defendant filed its motion. Id. at 11-12.
As to prejudice, while the timing of defendant’s motion weighed in favor of a stay, “there [was] the real prospect of at least a multi-year, lengthy delay” until the reexamination proceedings were complete. Id. at 15. The relationship between the parties also weighed against a stay. Because the parties “are the only two companies who participate in the balloon brachytherapy market” and “this ‘hard-fought’ competition has also spawned additional litigation” in another court, “it is very clear that the level of competition between the parties is acute.” Id. at 16-17. The Court’s conclusion was not affected by the fact that plaintiff did not seek a preliminary injunction “with the fact of direct competition not in any serious dispute.” Id. at 17.
Overall, while “the issue [was] a close one, with good arguments to be made for either outcome sought by the parties,” the potential for prejudice to plaintiff “[struck] the Court as more compelling, immediate and certain when compared to the potential for efficiency gains or simplification of the issues that might result from reexamination.” Id. at 20.