Niazi Licensing Corporation v. Boston Scientific Corp.

Background

Niazi Licensing Corporation alleged that Boston Scientific Corp., Medtronic, Inc., and St. Jude Medical S.C., Inc. infringed United States Patent No. 6,638,268. The three lawsuits were being handled on the same case track in the District of Minnesota.

Medtronic filed two petitions for inter partes review, an administrative process in which the Patent Trial and Appeal Board reviews the validity of patent claims. The Patent Office instituted both reviews on August 20, 2018. The reviews covered all claims asserted against Boston Scientific and St. Jude, and all but two claims asserted against Medtronic. The defendants asked the court to continue staying all three lawsuits until the Patent Trial and Appeal Board completed its review. Niazi did not oppose the requests.

Court’s reasoning

The court considered three factors commonly used when deciding whether to stay patent litigation during inter partes review:

- Prejudice: The court found that the stay would not unduly prejudice Niazi or place it at a tactical disadvantage because Niazi consented to the stay, sought only monetary damages, and the accused products had been on the market for more than a decade. - Simplification and judicial efficiency: The court found that the reviews could eliminate or narrow issues in the lawsuits. If the challenged patent claims were found invalid, the cases could change substantially. If claims survived, Medtronic would be barred by statute from later arguing that the patent was invalid on grounds it had raised during the reviews. - Stage of the cases: The lawsuits were still in an early stage. Fact discovery had just begun, significant discovery had not yet occurred, and no trial date had been set. Continuing the stay could prevent the parties from spending money on discovery that might become unnecessary.

The court also concluded that staying the Boston Scientific and St. Jude cases would keep the related lawsuits synchronized and avoid tactical advantages or disadvantages. Because Medtronic’s reviews challenged every claim asserted against Boston Scientific and St. Jude, the Patent Trial and Appeal Board’s decisions could also simplify those cases.

Order

The court granted the defendants’ unopposed requests for a stay in all three related cases. The order did not decide whether the patent was valid or whether any defendant infringed it.

The order required the parties to report newly filed inter partes review petitions concerning the patent, preserve relevant documents, and provide the final written review decisions to the other parties and the court. It scheduled a status call for June 19, 2019. After the final written decisions, the parties must meet and confer within seven days. If any patent claim survives review, they must submit a proposed amended scheduling order within 14 days, with deadlines for discovery, claim construction, dispositive motions, and trial preparation.

The order is signed by Becky R. Thorson, United States Magistrate Judge.