Case 1:20-cv-00925-JFB-SRF Document 121 Filed 04/06/21 Page 1 of 8 PageID #: 6825
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE DISTRICT OF DELAWARE
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`HOLOGIC, INC., a Delaware corporation;
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`and CYTYC SURGICAL PRODUCTS, )
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`LLC, a Massachusetts limited liability
`company,
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`Plaintiffs, )
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`MINERVA SURGICAL, INC., a
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`Delaware corporation, )
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`Defendant. )
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`v.
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`C.A. No. 20-295-JFB-SRF
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`MEMORANDUM OPINION
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`I. INTRODUCTION
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`Presently before the court in this patent infringement action is a motion to stay pending
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`C.A. No. 15-1031-the exhaustion of the appeals in Hologic, Inc. et al. v. Minerva Surgical, Inc.,
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`). 1 (D.I. 60
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`JFB-SRF filed by defendant Minerva Surgical, Inc. ("Minerva"
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`reasons, Minerva's motion to stay is GRANTED.
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`II.BACKGROUND
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`Hologic, Inc. and CYTYC Surgical Products, LLC (together, "Hologic") initiated this
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`action in July 2020, alleging infringement ofHologic's U.S. Patent No. 9,095,348 ("the '348
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`patent"
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`) by Minerva's redesigned Endometrial Ablation System ("Redesigned
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`EAS"). (D.I. 1 at
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`,-i,-i 1, 35, 61) The scope of the relief sought for the alleged infringement is limited to monetary
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`damages for the five month period the Redesigned EAS was sold before the '348 patent expired
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`1 The briefing and other filings associated with the pending motion to stay are found at D.I. 61,
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`D.I. 67, D.I. 68, D.I. 70, D.I. 75, D.I. 76, and D.I. 79.
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`Case 1:20-cv-00925-JFB-SRF Document 121 Filed 04/06/21 Page 2 of 8 PageID #: 6826
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`in November 2018.2 (Id) The scheduling order in this case acknowledges the significant
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`overlap between this action and prior lawsuits between the same parties. (D.I. 20 at 1i 2) In
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`particular, this action bears a substantial relation to Hologic, Inc. v. Minerva Surgical, Inc., CA.
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`No. 15-1031-JFB-SRF (the “First Action”), which was filed in November 2015 and asserted
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`causes of action for infringement of the ’348 patent and US. Patent No. 6,872,183 (“the ’183
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`patent”)3 by Minerva’s original Endometrial Ablation System. (D.I. 61, EX. 8) The Redesigned
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`EAS features a modified handpiece, but it functions in largely the same manner as Minerva’s
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`original Endometrial Ablation System. (D.I. 68, Ex. 6 at MSIDE000212-16; EX. 13 at 11 14)
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`In the First Action and parallel inter partes review (“IPR”) proceedings before the PTAB,
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`Minerva asserted a number of invalidity defenses pertaining to the ’348 patent. These included
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`defenses under 35 U.S.C. § 112 for written description and enablement, as well as prior art
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`defenses such as obviousness-type double patenting and obviousness under 35 U.S.C. § 103.
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`(D.I. 68, Exs. 1 & 2; D.I. 65, Ex. A at 39—80) The PTAB denied institution on Minerva’s IPR
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`petitions regarding the ’348 patent in September 2016, and it denied Minerva’s petitions for
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`rehearing in November 2016. (D.I. 68, Exs. 1—4) In May 2017, Minerva dropped its prior art-
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`based invalidity defenses and proceeded only on its § 112 defenses for written description and
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`enablement without amending the pleadings or formally withdrawing the prior art-based
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`invalidity defenses. (D.I. 65, Ex. C at 20-28)
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`2 Specifically, Hologic seeks damages from the date Minerva first commercialized the
`Redesigned EAS on June 28, 2018 to the date the ’348 patent expired on November 19, 2018.
`(D.I. 1 at W 35, 61)
`3 The ’183 patent was invalidated by the PTAB in a December 15, 2017 final written decision.
`(D.I. 61, Ex. 8 at 6) The Federal Circuit affirmed the PTAB’s final written decision in April
`2019.
`(161.) (citing Hologic, Inc. v. Minerva Surgical, Inc., 764 F. App’x 873, 881 (Fed. Cir.
`2019)).
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`The court issued its summary judgment ruling in the First Action in June 2018, which
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`rejected Minerva’s invalidity defenses on two bases. See Hologic, Inc. v. Minerva Surgical, Inc.,
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`325 F. Supp. 3d 507 (D. Del. 2018). First, the court held that Minerva’s invalidity defenses were
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`barred by the doctrine of assignor estoppel, which “prevents one who has assigned the rights to a
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`patent .
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`. from later contending that what was assigned is a nullity.” Id. at 523—25. Second, the
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`court concluded that Minerva’s motion for summary judgment of invalidity lacked merit even if
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`Minerva were not estopped from raising the defenses. Id. at 526-27. On appeal, the Federal
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`Circuit determined that the court did not abuse its discretion in applying assignor estoppel in the
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`First Action. See Hologic, Inc. v. Minerva Surgical, Inc., 957 F.3d 1256, 1267 (Fed. Cir. 2020).
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`The parties dispute whether the Federal Circuit also affirmed the court’s decision of no invalidity
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`on the merits of the invalidity defenses.
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`Minerva appealed the Federal Circuit’s ruling on assignor estoppel, and on January 8,
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`2021, the United States Supreme Court granted Minerva’s petition for writ of certiorari. Minerva
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`Surgical, Inc. v. Hologic, Inc., 141 S. Ct. 975 (2021). Oral argument is scheduled for April 21,
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`2021, and a decision is expected by the end of June 2021. (D.I. 61 at 7)
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`As a result of the substantial overlap between the present action and the First Action, only
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`minimal discovery was exchanged in this case. Fact discovery closed on December 30, 2020,
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`and expert discovery closed on March 8, 2021. (D.I. 20 at 11 2) Case dispositive motions were
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`filed on March 22, 2021.
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`(Id. at 11 11) A jury trial is scheduled to begin on August 23, 2021.
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`(Id. at 11 16) On January 22, 2021, Minerva filed the pending motion to stay the instant litigation
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`until the Supreme Court issues a decision in the First Action. (D.I. 61)
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`III.
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`LEGAL STANDARD
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`A court has discretionary authority to grant a motion to stay. See Landis v. N. Am. Co.,
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`299 US. 248, 254-55 (1936); Dentsply Int’l Inc. v. Kerr Mfg. Co., 734 F. Supp. 656, 658 (D.
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`Del. 1990). Courts consider three factors in deciding how to exercise this discretion: (1) whether
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`a stay will simplify the issues for trial; (2) the status of the litigation, particularly whether
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`discovery is complete and a trial date has been set; and (3) whether a stay would cause the non-
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`movant to suffer undue prejudice from any delay or allow the movant to gain a clear tactical
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`advantage. See Am. Axle & Manuf, Inc. v. Neapco Holdings LLC, CA. No. 15-1168-LPS, 2021
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`WL 616992, at *2 (D. Del. Feb. 17, 2021) (citing Ethicon LLC v. Intuitive Surgical, Inc, CA.
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`No. 17-871-LPS, 2019 WL 1276029, at *1 (D. Del. Mar. 20, 2019)).
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`IV.
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`DISCUSSION
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`A. Simplification of Issues
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`In support of the motion to stay, Minerva argues that the exhaustion of appeals in the
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`First Action will likely simplify the issues for trial because the Supreme Court’s decision may
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`cause the Federal Circuit to further address assignor estoppel or the merits of the invalidity
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`challenges to the ’348 patent under § 112. (D.I. 61 at 10) According to Minerva, the decision
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`could impact whether, and to what extent, Minerva can challenge the validity of the ’348 patent.
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`(Id. at 11)
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`In response, Hologic contends that a stay will not simplify the issues for trial because
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`Minerva already unsuccessfully litigated the validity of the ’348 patent on the merits in the First
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`Action and in the parallel IPR proceedings. (DJ. 67 at 3-6) Because the court entered a final
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`judgment dismissing all of Minerva’s invalidity defenses and counterclaims in the First Action,
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`Hologic argues that Minerva’s invalidity defenses are subject to claim and issue preclusion even
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`if the Supreme Court eliminates or narrows the doctrine of assignor estoppel.
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`(Id. at 6-13)
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`This factor weighs in favor of a stay because the Supreme Court’s ruling may have an
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`impact on future rulings in the case. See, e.g., Franklin v. Navient Corp., CA. No. 17-1640-
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`RGA, D.I. 64 at 111] 3-4 (D. Del. Apr. 1, 2020) (granting motion to stay pending Supreme Court
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`decision after petition for writ of certiorari was granted). If the Supreme Court upholds the
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`doctrine of assignor estoppel, the ruling will resolve Minerva’s invalidity defenses in this action,
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`thereby simplifying the issues for trial. If, on the other hand, the Supreme Court eliminates or
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`narrows the doctrine of assignor estoppel, remand to the Federal Circuit for further consideration
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`of the merits of the invalidity defenses is possible, and it would make little sense to proceed to a
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`jury trial in August 2021 under that scenario. See Butamax Advanced Biofuels LLC v. Gevo,
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`Inc., CA. No. 11-54-SLR, 2014 WL 12639238, at *1 (D. Del. July 11, 2014) (noting the
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`likelihood that a jury verdict rendered in between the grant of a cert petition and a remand to the
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`Federal Circuit would be negated).
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`Much of the parties’ briefing on this factor is devoted to their dispute regarding whether
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`the Federal Circuit affirmed the District Court’s summary judgment decision of no invalidity on
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`the merits, and whether claim or issue preclusion therefore bars Minerva’s invalidity defenses.
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`(DJ. 61 at 12-13; D.I. 67 at 3-13; D.I. 70 at 2-7) As a preliminary matter, the nature and scope
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`of the invalidity defenses Minerva plans to pursue in this action will not take shape until alter the
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`Supreme Court issues its decision. The operative scheduling order in this case dictates that
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`Minerva’s initial invalidity contentions are to be served “after all appeals from the First Action
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`are exhausted.” (DJ. 20 at 1] 2.b.v) Moreover, Hologic has since fully briefed the subjects of
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`claim and issue preclusion in its motion for summary judgment of no invalidity, which is
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`pending before the assigned District Judge in this action. (D.I. 95 at 8-20) Under these
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`circumstances, any determinations by this court on claim preclusion, issue preclusion, or the
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`scope of the Federal Circuit’s ruling on invalidity would be premature.
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`B. Stage of Litigation
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`Minerva argues that this case is in the early stages because, at the time the motion was
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`filed, fact discovery was not complete and expert discovery had just begun. (D.I. 61 at 13) By
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`the time this motion was fully briefed, however, service of expert reports was nearly complete.
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`(D.I. 70; D.I. 80) The deadlines for fact and expert discovery have now expired, and the parties
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`have filed their case dispositive motions. (D1. 20) In this regard, the case is not in its early
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`stages.
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`Nonetheless, this factor weighs in favor of a stay. As previously stated at § IVA, supra,
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`the deadline for Minerva’s initial invalidity contentions is thirty days after all appeals from the
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`First Action are exhausted. (D.I. 20 at fll 2.b.v) Because the invalidity portion of this case is
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`directly tied to the outcome of the appeal to the Supreme Court, this factor weighs in favor of a
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`stay.
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`C. Prejudice
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`Minerva alleges that the entry of a stay will not prejudice Hologic because Minerva
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`diligently filed its petition for writ of certiorari nearly three months before the deadline to do so,
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`it moved to stay the case shortly after the Supreme Court granted its petition, the Supreme Court
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`is likely to issue a decision by June 2021, and Hologic seeks only monetary damages. (D.I. 61 at
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`16-1 8) In response, Hologic contends that a stay would be prejudicial because infringement by
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`the Redesigned EAS would have been litigated in the First Action if not for Minerva’s
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`concealment of the commercialization and launch of the redesigned product. (D.I. 67 at 18-19)
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`Hologic further argues that staying the case would allow Minerva to continue its efforts to delay
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`resolution on the merits and relitigate invalidity issues that are not properly before the court.
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`(Id.
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`at 19)
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`If the timing of a motion to stay “appears less focused on facilitating an orderly review of
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`patent claim validity, and more focused on simply disrupting the progression of the non-
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`movant’s district court case for disruption’s sake, that can weigh against a stay.” Toshiba
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`Samsung Storage Tech. Korea Corp. v. LG Elecs., Inc., 193 F. Supp. 3d 345, 350 (D. Del. 2016).
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`That is not the case in this instance. Here, Minerva submitted a timely petition for writ of
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`certiorari and filed its motion to stay within two weeks of the Supreme Court granting the
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`petition. The positions taken by Hologic throughout this litigation confirm that the issues before
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`the court in this case overlap almost entirely with the issues in the First Action.4 Accordingly,
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`granting the stay in this case pending resolution of appeals in the First Action would facilitate an
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`orderly review of the validity of the ’348 patent. In contrast, denying the stay would place the
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`District Judge in the position of considering Hologic’s invalidity arguments on summary
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`judgment, including assignor estoppel, before the Supreme Court has rendered a decision on the
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`issue. (D.I. 95 at 20) This factor weighs in favor of Minerva.
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`On balance, the stay factors weigh in favor of granting Minerva’s motion and staying this
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`action until the exhaustion of all appeals in the First Action.
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`V.
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`CONCLUSION
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`For the foregoing reasons, Minerva’s motion to stay the proceedings is GRANTED. (D.I.
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`60) The parties shall jointly inform the court of the outcome of the proceedings before the
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`4 By way of example, Hologic proposed reusing the expert reports from the First Action in this
`action in the proposed form of scheduling order, (D.I. 19 at 1] 2.h), and Hologic re-raised the
`issue of assignor estoppel in its motion for summary judgment of invalidity in this action, (D.I.
`95 at 20).
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`United States Supreme Court and provide a copy of the opinion no later than one week following
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`the issuance of the opinion. An Order consistent with this Memorandum Opinion shall issue.
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`Given that the court has relied upon material that technically remains under seal, the
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`court is releasing this Memorandum Opinion under seal, pending review by the parties. In the
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`unlikely event that the parties believe that certain material in this Memorandum Opinion should
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`be redacted, the parties shall jointly submit a proposed redacted version by no later than April
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`13, 2021, for review by the court, along with a motion supported by a declaration that includes a
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`clear, factually detailed explanation as to why disclosure of any proposed redacted material
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`would “work a clearly defined and serious injury to the party seeking closure.” See In re
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`Avandia Mktg., Sales Practices & Prods. Liab. Litig., 924 F.3d 662, 672 (3d Cir. 2019) (quoting
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`Miller v. Ind. Hosp, 16 F.3d 549, 551 (3d Cir. 1994) (internal quotation marks omitted)). If the
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`parties do not file a proposed redacted version and corresponding motion, or if the court
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`determines the motion lacks a meritorious basis, the documents will be unsealed within thirty
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`(30) days of the date the Memorandum Opinion issued.
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`This Memorandum Opinion is filed pursuant to 28 U.S.C. § 636(b)(l)(A), Fed. R. Civ. P.
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`72(a), and D. Del. LR 72.1(a)(2). The parties may serve and file specific written objections
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`within fourteen (14) days after being served with a copy of this Memorandum Opinion. Fed. R.
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`Civ. P. 72(a). The objections and responses to the objections are limited to ten (10) pages each.
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`The parties are directed to the court’s Standing Order For Objections Filed Under Fed. R. Civ. P.
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`72, dated October 9, 2013, a copy of which is available on the court’s website,
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`www.ded.uscourts.gov.
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`Dated: April 6, 2021
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`1
`S terry R Fal
`United States Magistrate Judge
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