The opinion of the court was delivered by: Pisano, District Judge.
Presently before the Court in this patent infringement action is a joint motion by Defendants Abbott Laboratories and Abbot Cardiovascular Systems, Inc. (together, "Abbott") and Boston Scientific Corporation and Boston Scimed, Inc. (together, "BSC") to stay the proceedings pending inter partes reexamination by the Patent and Trademark Office (the "Patent Office") of U.S. Patent No. 7,591,844 (the "'844 patent"), entitled "Medical Devices, Drug Coatings and Methods for Maintaining Drug Coatings Thereon", and U.S. Patent No. 6,746,773 (the "'773 patent"), entitled "Coatings for medical devices." Plaintiffs Wyeth, Cordis Corporation and Cordis LLC (together, "Cordis" or "Plaintiffs") oppose the motion. The Court decides the matter without oral argument pursuant to Federal Rule of Civil Procedure 78. The Court has carefully considered the submissions of the parties, and for the reasons below, Defendants' motion is denied.
Plaintiffs filed their complaint in this action on September 22, 2009, the same date that the '844 patent issued, alleging that Defendants' manufacture and/or sale of certain drug-eluting coronary stents infringe the claims of the '844 patent. On April 15, 2010, BSC filed a request for inter partes reexamination of all 24 of the claims of the '844 patent on the grounds that the claims are invalid as obvious in light of a number of prior art references that BSC alleges had not been previously disclosed to the Patent Office. On June 14, 2010, Abbott also requested inter partes reexamination of all claims in the '844 patent based, in part, on additional prior art references. The Patent Office granted these requests on June 30, 2010, and August 25, 2010, respectively.
On July 13, 2010, Plaintiff moved for leave to file an amended complaint to add the '733 patent to this case, which motion was ultimately granted. On August 23, 2010, Abbott filed a request for inter partes reexamination of all the remaining*fn1 claims in the '773 patent citing a number of prior art references allegedly not disclosed to or considered by the Patent Office in their initial examination or subsequent ex parte reexamination of the '773 patent. The Patent Office granted this request on November 19, 2010.
It is well-established that "the power to stay proceedings is incidental to the power inherent in every court to control the disposition of the causes on its docket with economy of time and effort for itself, for counsel, and for litigants." Landis v. North Am. Co., 299 U.S. 248, 254 (1936). Thus, the decision to stay a patent case in which a reexamination by the Patent Office has been requested is within the sound discretion of the district court. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1426-27 (Fed. Cir. 1988) (noting that "[c]courts have inherent power to manage their dockets and stay proceedings, including the authority to order a stay pending conclusion of a PTO reexamination.") (internal citations omitted).
In deciding whether to stay a matter pending reexamination, courts have developed a three-part test. A court should consider "(1) whether a stay would unduly prejudice or present a clear tactical disadvantage to the non-moving party; (2) whether a stay will simplify the issues in question and trial of the case; and (3) whether discovery is complete and whether a trial date has been set." Xerox Corp. v. 3Com Corp., 69 F. Supp 2d 404, 406 (W.D.N.Y. 1999). As set forth below, the Court finds that upon consideration of these factors Defendants' motion for a stay pending reexamination should be denied.
A. Prejudice and Tactical Advantaage
Defendants argue that Cordis will suffer no undue prejudice by the stay, but rather will at most suffer inconvenience as a result of the delay inherent in the reexamination process. Cordis, on the other hand, argues that the inter partes reexamination at issue could take over six years and that it would be unfairly prejudiced by such a delay. See Declaration Of Nicholas P. Godici (opining that "it will take at least 6.42 years, and possibly longer, for the PTO to issue an inter partes reexamination certificate for any of Defendants' reexamination requests, including an appeal to the Board of Patent Appeals and Interferences and the Federal Circuit."). In particular, Cordis notes that it and Defendants are direct competitors and Defendants' Xience/Promus stents, which Cordis alleges infringe the patents-in-suit, compete directly with Cordis's Cypher stent. Cordis asserts that the alleged infringement has cost it roughly a billion dollars in annual sales, and has forced it to lay off key employees and reduce its research and development programs. As such, Cordis asserts that its very existence as a competitor in the drug-eluting stent field is threatened. It seeks a "quick trial" and states that it will seek a permanent injunction should it prevail. Thus, Cordis argues that the delay occasioned by the reexamination will delay entry of an injunction and cause them irreparable harm.
Cordis also notes that the patents-in-suit expire in September of 2020. As such, it argues that a stay might prevent this matter from going to trial during the remaining life of the patents, thus effectively eliminating Cordis's right to exclusivity and granting Defendants "what amounts to a compulsory license." Pl. Brf. at 19.
Finally, Cordis asserts that a stay would place it at a tactical disadvantage in this litigation, in that a delay of 6 or more years will result in the loss of evidence as memories fade and key trial witnesses become unavailable.
The Court agrees that Cordis will be prejudiced by the imposition of a stay. Cordis alleges it has suffered significant decline in its market share, and if it is required to wait for the Patent Office to complete its reexamination it may be harmed further. Moreover, a significant delay in this litigation may result in evidence becoming more difficult to access as witnesses may become unavailable and ...