In Transcend Medical, Inc. v. Glaukos Corp., C.A. No. 13-380 (D. Del. Oct. 9, 2015), Judge C. Darnell Jones, II, writing for Judge Mitchell S. Goldberg, denied Glaukos’ (declaratory judgment-defendant) request to postpone the inequitable conduct trial schedule for November 2, 2015. As Judge Jones explained, the court previously granted Transcend’s (declaratory judgment-plaintiff) motion for summary judgment on non-infringement, denied Glaukos’ motion on the issue of inequitable conduct, and scheduled the inequitable conduct trial. Id. at 1. Glaukos urged that the “inequitable conduct trial be postponed because the infringement ruling resolved the gravamen of the dispute between the parties and a trial on the inequitable conduct issue would be a waste of resources and potentially unnecessary in the event that the infringement ruling is affirmed on appeal.” Id. While the parties agreed that “following summary judgment of non-infringement, courts have the discretion to dismiss any remaining inequitable conduct and invalidity claims without prejudice to allow an appeal of the non-infringement judgment to go forward,” the court found it should not exercise that discretion. Id. at 1-2.
First, Judge Jones pointed to the fact that “parties have expended substantial resources preparing for trial and are close to being prepared to try this case,” and that postponement might “require the parties to prepare for trial a second time.” Id. at 2. Judge Jones further explained that “the inequitable conduct trial is a bench trial and will not involve a lengthy jury selection process,” and that “there is significant overlap between the parties’ witnesses.” Id. Judge Jones also reasoned that “proceeding to trial on the inequitable conduct claim will serve to provide more clarity regarding the parties’ positions in the event that the infringement ruling is reversed on appeal,” and that “reaching final judgment on all of the claims raised in this case will avoid the potential for piecemeal appellate litigation.” Id.