Varian Medical Systems, Inc. v. ViewRay, Inc.
- Susan Illston
- 3:19-cv-05697
- U.S. District Court · Northern District of California
- 2
Varian Medical Systems v. ViewRay: Judge Illston denied defendants’ request to pause the patent case, allowing renewal if review proceedings begin.
The defendants’ request to pause the case was denied for now, but they may renew the request if the Patent Trial and Appeal Board institutes the inter partes reviews. The case otherwise proceeds under the existing schedule, subject to possible discovery modifications.
What happened
In Varian Medical Systems, Inc. v. ViewRay, Inc., the defendants asked the court to pause the case while the Patent Trial and Appeal Board considered their petitions to review Varian’s asserted patent claims.
The court noted that the case had involved some discovery, a claim-construction order, and an August 2021 trial date. Although review proceedings might simplify or eliminate issues, the Board had not yet decided whether to begin them.
The court denied the motion to stay without prejudice to renewal if the review proceedings are instituted. Judge Illston vacated the scheduled hearing and said the parties could seek changes to the discovery schedule.
The detailed version
- Varian Medical Systems, Inc. v. ViewRay, Inc. · No. 3:19-cv-05697
- Susan Illston
- Sept. 9, 2020
Background
Defendants moved to stay, or pause, the case while the Patent Trial and Appeal Board (PTAB) considered their petitions for inter partes review (IPR), a procedure for challenging patent claims before the PTAB. Defendants filed the petitions in July and August 2020, and the parties expected the PTAB to act on them in February 2021. Every claim Varian asserted in the case was the subject of a pending petition. Defendants argued that IPR proceedings, if instituted, could clarify and streamline the case or make it unnecessary. Varian opposed the stay.
The court had scheduled a hearing for September 18, 2020, but determined that oral argument was unnecessary and vacated the hearing. The case had been filed in September 2019. The parties had engaged in some discovery, the court had issued a claim-construction order on July 24, 2020, and the court had set an August 2021 trial date along with deadlines for fact and expert discovery and motion practice.
Analysis
Courts may manage their dockets by staying proceedings. In deciding whether to stay a case pending IPR, courts consider the stage of the litigation, whether a stay would simplify the issues and trial, and whether a stay would unfairly harm the opposing party.
The court concluded that these considerations weighed against a stay at that time. It recognized that IPR proceedings, if instituted, could simplify the case and promote efficiency. But it was still unknown whether the PTAB would grant the petitions. The court therefore concluded that the better course was to continue the case and allow defendants to renew their request if the PTAB instituted the IPRs. The court also said it would consider possible changes to the discovery schedule through an agreement between the parties or at the next case-management conference, including in light of the burdens associated with COVID-19.
Disposition
The court denied defendants’ motion to stay without prejudice to renewal if the PTAB institutes the IPRs. Judge Susan Illston ordered the scheduled hearing vacated. The opinion did not decide whether the PTAB would institute the IPRs or resolve the patent claims.
Read the full 2-page opinion on CourtListener, the free public archive maintained by the Free Law Project.