Nanobebe US Inc. v. Mayborn Limited

Background

Nanobebe US Inc. brought a declaratory-judgment action against Mayborn (UK) Limited, Mayborn USA, Inc., and Mayborn Group Limited. The dispute concerns whether Nanobebe’s baby bottles infringe Mayborn’s U.S. Patent Nos. 10,952,930 and 11,207,244, which concern a baby bottle with flexible nipple regions. Mayborn filed two counterclaims.

The court had held a technology tutorial and a hearing on the meaning of disputed patent terms. It issued its claim-construction opinion on April 18, 2023. Discovery was ongoing, with fact discovery scheduled to close on September 12, 2023, and expert discovery scheduled to close on November 22, 2023.

Nanobebe also filed two petitions for inter partes review, an administrative process in which the Patent Trial and Appeal Board reviews whether patent claims are unpatentable. On June 16, 2023, the Board instituted review of the challenged claims after finding a reasonable likelihood that Nanobebe would establish that at least one challenged claim in each patent was unpatentable because it was obvious.

The Court’s Analysis

The court applied three main considerations: whether the Board’s review would simplify the litigation, how far the litigation had progressed, and whether a stay would prejudice Mayborn.

The court found that the first consideration strongly favored a stay. The Board’s review covered the same patents and claims involved in the lawsuit: Claims 14, 16, 17, and 19 of the ’930 Patent and Claims 21–24, 26, and 27 of the ’244 Patent. If claims were canceled, the litigation could be reduced or ended as to those claims. If claims survived, the Board’s decision could clarify the issues, and Nanobebe could be barred from raising certain invalidity arguments that it could have raised during the review.

The court found that the litigation stage weighed moderately against a stay because the parties had completed claim construction and were conducting discovery. But the court also noted that depositions, expert discovery, summary-judgment and other anticipated motions, and trial remained. The court therefore concluded that this factor did not weigh heavily against a stay.

The court evaluated four aspects of possible prejudice to Mayborn. The timing of Nanobebe’s review request, the timing of its stay motion, and the fact that review had already been instituted each favored a stay. The parties’ status as competitors weighed against a stay, but not heavily. Mayborn had not identified specific financial harm, market-share loss, or goodwill effects. The court also noted that Mayborn had not sought a preliminary injunction and had not argued that money damages would be insufficient.

Ruling

Judge Jennifer L. Rochon held that, on balance, the factors favored a stay, particularly because the Board was reviewing overlapping patent claims and its decision would be binding on the district court for relevant issues. The court granted Nanobebe’s motion to stay and stayed the action pending the outcome of the inter partes review proceedings before the Patent Trial and Appeal Board.

The parties were directed to notify the court within one week of any decision issued by the Board. The Clerk of Court was directed to close the motions at ECF Nos. 95, 96, and 98.