In Invista North America S.A.R.L., et al. v. M&G USA Corporation, et al., C.A. No. 11-1007-SLR, defendants filed motions to stay the bifurcated damages and willfulness stages of the case, and for relief from judgment under Rule 60(b), following entry of final judgment of infringement for plaintiffs.
In addition to appealing that judgment, defendants had also filed requests for reexamination with the PTO, and the PTO subsequently issued an office action rejecting all claims of the patent-in-suit as invalid. As a result, even though the Federal Circuit affirmed the district court’s final judgment, defendants moved to stay the damages and willfulness portions of the case, and for relief from judgment under Rule 60(b) in light of the reexamination process.
Judge Robinson denied both motions. (D. Del. Jan. 14, 2015). A stay would “impose a clear tactical disadvantage to [plaintiffs], the party with a final judgment in hand obtained at great cost, given the fact that [defendants had] defended itself vigorously.” Id. at 3. Instead, once damages had been determined, the Court would “consider whether it is appropriate to maintain the status quo at that point in time, depending on the status of the reexamination proceeding.” Id. at 4.
As to the 60(b) motion, the Court concluded that the PTO’s non-final office action was “simply a preliminary determination of its legal conclusions, [and] it does not constitute the kind of ‘new evidence’ that courts generally view as sufficient to change the outcome of the trial.” Id. at 5. The Court also rejected defendants’ other arguments that plaintiffs “made post-verdict ‘contradictory representations’ to the European Patent Office” warranting relief, and that the recent Federal Circuit decisions regarding indefiniteness should be considered pursuant to Rule 60, “despite the fact that [defendants] never presented the defense of indefiniteness at trial or on appeal.” Id. Finally, the Court disagreed that an injunction was no longer equitable I light of the PTO’s rejections; it “decline[d] to nullify a remedy approved by the Federal Circuit on the basis of reexamination proceedings still in their infancy.” Id. at 6.