Case 1:23-cv-00278-MN Document 54-9 Filed 02/09/24 Page 1 of 19 PageID #: 1098
`Case 1:23-cv-00278-MN Document 54-9 Filed 02/09/24 Page 1 of 19 PagelD #: 1098
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`EXHIBIT I
`EXHIBIT I
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`Case 1:18-cv-01436-MN Document 137 Filed 05/19/20 Page 1 of 18 PageID #: 9408Case 1:23-cv-00278-MN Document 54-9 Filed 02/09/24 Page 2 of 19 PageID #: 1099
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`QUEST DIAGNOSTICS INVESTMENTS
`LLC,
`
`Plaintiff,
`
`C.A. No.: 1:18-CV-01436-MN
`
`v.
`
`LABORATORY CORPORATION OF
`AMERICA HOLDINGS, ESOTERIX, INC.,
`and ENDOCRINE SCIENCES, INC.,
`
`Defendants.
`
`DEFENDANTS’ OPENING BRIEF IN SUPPORT OF MOTION FOR STAY PENDING
`RESOLUTION OF INTER PARTES REVIEW
`
`Ian R. Liston (#5507)
`WILSON SONSINI GOODRICH &
`ROSATI, P.C.
`222 Delaware Avenue, Suite 800
`Wilmington, DE 19801
`(302) 304-7600
`iliston@wsgr.com
`
`Counsel for Defendants Laboratory
`Corporation of America Holdings;
`Esoterix, Inc.; and Endocrine Sciences, Inc.
`
`Of Counsel:
`Edward G. Poplawski
`Olivia M. Kim
`Erik J. Carlson
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`633 West Fifth Street, Suite 1550
`Los Angeles, CA 90071
`(323) 210-2900
`epoplawski@wsgr.com
`okim@wsgr.com
`ecarlson@wsgr.com
`
`Matias Ferrario
`KILPATRICK TOWNSEND & STOCKTON LLP
`1001 West Fourth Street
`Winston-Salem, NC 27101-2400
`(336) 607-7300
`mferrario@kilpatricktownsend.com
`
`Dated: May 19, 2020
`
`

`

`
`
`Case 1:18-cv-01436-MN Document 137 Filed 05/19/20 Page 2 of 18 PageID #: 9409Case 1:23-cv-00278-MN Document 54-9 Filed 02/09/24 Page 3 of 19 PageID #: 1100
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`TABLE OF CONTENTS
`
`Table of Authorities ........................................................................................................................ ii
`I.
`INTRODUCTION .................................................................................................................. 1
`II. NATURE AND STAGE OF THE PROCEEDINGS ............................................................. 2
`III.
`SUMMARY OF ARGUMENT ........................................................................................... 3
`IV.
`STATEMENT OF FACTS .................................................................................................. 4
`A.
`The Asserted Claims ........................................................................................................ 4
`B.
`The Parties’ Efforts in COVID-19 Response ................................................................... 5
`V. ARGUMENT .......................................................................................................................... 6
`A.
`A Stay Pending IPR is Likely to Simplify the Issues For Trial ....................................... 7
`B.
`The Stage of Litigation Favors a Stay .............................................................................. 8
`C.
`A Stay Will Not Unduly Prejudice Plaintiffs or Present Clear Tactical Advantage for
`Defendants ...................................................................................................................... 10
`The LabCorp IPRs Were Timely Filed. ...................................................................... 10
`Defendants Timely Moved to Stay This Case. ........................................................... 12
`The Status of the IPR Proceedings Favors a Stay. ..................................................... 12
`The Relationship of the Parties Does Not Create Undue Prejudice. .......................... 13
`CONCLUSION .................................................................................................................. 14
`
`1.
`2.
`3.
`4.
`
`VI.
`
`- i -
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`

`

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`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`454 Life Scis. Corp. v. Ion Torrent Sys., Inc.,
`No. 15-595-LPS, 2016 WL 6594083 (D. Del. Nov. 7, 2016) ..............................................8, 14
`
`Advanced Microscopy Inc. v. Carl Zeiss Microscopy, LLC,
`No. 15-516-LPS-CJB, 2016 WL 558615 (D. Del. Feb. 11, 2016) ..........................................12
`
`AIP Acquisition LLC v. Level 3 Commc’ns, LLC,
`No. 12-1688-GMS, 2014 WL 12642000 (D. Del. Jan. 9, 2014) ...............................................8
`
`Alloc, Inc. v. Unilin Decor N.V.,
`No. Civ. A. 03-253-GMS, 2003 WL 21640372 (D. Del. July 11, 2003) ..................................8
`
`Bonutti Skeletal Innovations, L.L.C. v. Zimmer Holdings, Inc.,
`No. 12-CV-1107 (GMS), 2014 WL 1369721 (D. Del. Apr. 7, 2014) ...............................11, 13
`
`CallWave Commc’ns, LLC v. AT & T Mobility, LLC,
`No. 12-1701-RGA, 2015 WL 1284203 (D. Del. Mar. 18, 2015) ..............................................9
`
`Celorio v. On Demand Books LLC,
`No. 12-821-GMS, 2013 WL 4506411 (D. Del. Aug. 21, 2013) ..........................................7, 10
`
`Contour IP Holding, LLC v. GoPro, Inc.,
`C.A. No. 15-1108LPS-CJB, 2016 WL 4474340 (D. Del. July 14, 2016) ...........................8, 10
`
`Copy Prot. LLC v. Netflix, Inc.,
`No. 14-365- LPS, 2015 WL 3799363 (D. Del. June 17, 2015) ...............................................12
`
`Ethicon LLC v. Intuitive Surgical, Inc.,
`No. 17-871-LPS, 2019 WL 1276029 (D. Del. Mar. 20, 2019) ................................................13
`
`Ethicon, Inc. v. Quigg,
`849 F.2d 1422 (Fed. Cir. 1988)..................................................................................................6
`
`Ever Win Int’l Corp. v. RadioShack Corp.,
`902 F. Supp. 2d 503 (D. Del. 2012) .....................................................................................7, 13
`
`First Am. Title Ins. Co. v. Maclaren, LLC,
`No. 10-cv-363 (GMS), 2012 WL 769601 (D. Del. Mar. 9, 2012) .............................................6
`
`Found. Med., Inc. v. Guardant Health, Inc.,
`No. 17-807-LPS-CJB, 2018 WL 950261 (D. Del. Feb. 15, 2018) ............................................6
`
`- ii -
`
`

`

`
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`
`Neste Oil OYJ v. Dynamic Fuels, LLC,
`No. 12-1744-GMS, 2013 WL 3353984 (D. Del. July 2, 2013) .......................................6, 7, 10
`
`Novartis AG v. HEC Pharm Co.,
`183 F. Supp. 3d 560 (D. Del. 2016) (Stark, J.) ..........................................................................6
`
`Peschke Map Techs., LLC v. J.J. Gumberg Co.,
`40 F. Supp. 3d 393 (D. Del. 2014) .........................................................................................6, 9
`
`Princeton Dig. Image Corp. v. Konami Dig. Entm’t Inc.,
`No. 10-389-LPS, 2014 WL 3819458 (D. Del. Jan. 15, 2014) .....................................10, 11, 13
`
`SenoRx, Inc. v. Hologic, Inc.,
`No. 12-173-LPS-CJB, 2013 WL 144255 (D. Del. Jan. 11, 2013) .......................................8, 13
`
`Sirona Dental Sys. GmbH v. Dental Wings Inc.,
`No. 14-460-LPS-CJB (D. Del. Mar. 22, 2016) ..........................................................................8
`
`Softview LLC v. Apple Inc.,
`No. 12-989-LPS, 2013 WL 4757831 (D. Del. Sept. 4, 2013) ...................................................6
`
`SunPower Corp. v. PanelClaw,
`No. 12-1633-GMS, 2014 WL 12774919 (D. Del. May 16, 2014) ..........................................11
`
`VirtualAgility Inc. v. Salesforce.com, Inc.,
`759 F.3d 1307 (Fed. Cir. 2014)................................................................................................13
`
`Statutes
`
`35 U.S.C. § 315(b) .........................................................................................................................11
`
`35 U.S.C. § 315(e)(2) .......................................................................................................................8
`
`35 U.S.C § 316(a)(11) ....................................................................................................................12
`
`Other Authorities
`
`Patent Trial & Appeal Bd., Trial Statistics: IPR, PGR, CBM, at 10 (Mar. 2020),
`https://www.uspto.gov/sites/default/files/documents/trial_statistics_20200331.
`pdf .......................................................................................................................................... 7-8
`
`- iii -
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`I.
`
`INTRODUCTION
`
`Defendants Laboratory Corporation of America Holdings, Esoterix, Inc., and Endocrine
`
`Sciences, Inc. (collectively, “Defendants” or “LabCorp”) hereby request that the Court stay this
`
`matter until the final disposition, including the completion of any appeals, of the currently
`
`pending inter partes review (“IPR”) proceedings regarding the Asserted Patents.
`
`For three of the four Asserted Patents, the Patent Trial and Appeal Board (“PTAB”) has
`
`instituted IPR of all the challenged claims. IPRs have been initiated as to U.S. Patent Nos.
`
`8,409,862 (the “’862 Patent”), 8,101,427 (the “’427 Patent”), and 7,972,868 (the “’868 Patent”)
`
`(collectively, the “Asserted Patents”) asserted against LabCorp in the above-captioned case.1 See
`
`Ex. A: Laboratory Corp. of America Holdings v. Quest Diagnostics Inv. LLC, No. IPR2019-
`
`00738, Paper 14 (the “’862 Patent IPR”); Ex. B: Laboratory Corp. of America Holdings v. Quest
`
`Diagnostics Inv. LLC, No. IPR2019-01425, Paper 9 (the “’427 Patent IPR”); Ex. C: Laboratory
`
`Corp. of America Holdings v. Quest Diagnostics Inv. LLC, No. IPR2019-01618, Paper 12 (the
`
`“’868 Patent IPR”) (collectively, the “LabCorp IPRs”). Because (a) the LabCorp IPRs will
`
`simplify issues for trial, (b) the case is still in fact discovery with trial over fourteen (14) months
`
`away, and (c) Plaintiff Quest Diagnostics Investments LLC (“Quest”) will not be prejudiced,
`
`LabCorp respectfully requests a stay of the present litigation pending resolution of the LabCorp
`
`IPRs.
`
`The potential for simplification is great in this case, and staying this action will maximize
`
`the likelihood that neither the Court nor the parties will expend additional resources addressing
`
`potentially invalid claims. The case is at an efficient stopping point as well. Due to the COVID-
`
`1 The PTAB did not initiate IPR with respect to U.S. Patent No. 7,972,867 (the “’the ’867
`Patent”). LabCorp has requested rehearing on the decision. See Ex. D: Laboratory Corp. of
`America Holdings v. Quest Diagnostics Inv. LLC, No. IPR2019-01517, Paper 12.
`
`- 1 -
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`19 pandemic, the parties have already agreed, with the Court’s blessing, to extend fact discovery
`
`and related deadlines and also to reschedule the taking of depositions from certain fact witnesses.
`
`Many case milestones still lie ahead, including expert discovery, dispositive motions, Daubert
`
`motions, pretrial and trial, all of which will incur significant burden and costs for those involved.
`
`Unique to this matter, key witnesses for both parties are also presently involved in trying to
`
`resolve the nationwide testing crisis for the COVID-19 pandemic; a stay will further reduce
`
`burdens of litigation on these key personnel. In short, a stay would save the Court and parties
`
`substantial time and effort.
`
`II.
`
`NATURE AND STAGE OF THE PROCEEDINGS
`
`On September 17, 2018, Quest filed this case, accusing LabCorp of infringement under
`
`the ’862, ’427, ’867, and ’868 Patents. In the months that followed, LabCorp filed a petition for
`
`IPR directed to each of the Asserted Patents.2 IPR proceedings for three of the four Asserted
`
`Patents were instituted: (1) the ’862 Patent IPR was instituted on September 4, 2019, with
`
`PTAB’s Final Written Decision due on September 15, 2020; (2) the ’427 Patent IPR was
`
`instituted on February 6, 2020, with PTAB’s Final Written Decision due on February 7, 2021;
`
`and (3) the ’868 Patent IPR was instituted on March 20, 2020, with PTAB’s Final Written
`
`Decision due on March 5, 2021. Fact discovery in this case closes on July 2 2020. Fact
`
`depositions have yet to begin in light of travel disruptions caused by various COVID-19 orders.
`
`(D.I. 129 at ¶¶ 5-6.) The parties have not yet served expert reports or begun expert discovery,
`
`which is set to close on November 13, 2020. Dispositive motion briefing is approximately 7
`
`months away, and trial is set for July 12, 2021.
`
`2 The ’862 Patent IPR was filed on February 25, 2019. The ’427 Patent IPR was filed on July
`29, 2019. The ’867 Patent IPR was filed on August 19, 2019. The ’868 Patent IPR was filed on
`September 17, 2019. Defendants have not previously filed a motion to stay pending resolution
`of the IPR proceedings.
`
`- 2 -
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`III.
`
`SUMMARY OF ARGUMENT
`
`The Court should stay this case in order to permit the simplification that will come from
`
`the PTAB’s review of three of the four Asserted Patents. Given the substantial likelihood that
`
`the LabCorp IPRs will streamline the issues, the Court should exercise its inherent authority to
`
`stay this case in the interests of judicial and litigant efficiency. All three factors typically
`
`evaluated when considering a request to stay weigh strongly in favor of a stay here. In addition,
`
`key witnesses from both parties are presently working on testing in response to the COVID-19
`
`pandemic – a stay would temporarily relieve the burden of this litigation from these witnesses.
`
`First, a stay will simplify the issues in this case. If the LabCorp IPRs are entirely
`
`successful, a significant portion of this case will be moot. And even if the LabCorp IPRs are
`
`only partially successful, numerous issues in this case will be reduced or simplified, with
`
`estoppel attached to certain prior art. If a stay is not issued, by contrast, the Court and the parties
`
`may undertake full fact and expert discovery and dispositive motion practice only to have at least
`
`some of the asserted claims later ruled invalid by the PTAB. With fact depositions yet to begin,
`
`and expert reports, dispositive motions, and trial still in the future, a stay will prevent
`
`unnecessary expenditure of resources by both the Court and the parties in the likely event that the
`
`LabCorp IPRs narrow and simplify many issues in this case.
`
`Second, this case is still more than a year from trial. As discussed above, fact discovery
`
`has been extended by agreement of the parties and leave of the Court, with depositions yet to
`
`begin. This extension is due in part to the COVID-19 pandemic and the disruptions caused by
`
`various stay-at-home orders. Expert discovery also has yet to begin. It is therefore at a timely
`
`pausing point, where the parties’ current activities will not be severely impaired but before
`
`additional expenses are incurred by moving into the next phase of the litigation.
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`Third, a stay will not unduly prejudice Quest or provide LabCorp with a clear tactical
`
`advantage. Other than the ’868 Patent IPR, the petitions were filed months before the one-year
`
`deadline to do so. LabCorp did not immediately seek a stay upon filing the petitions, but instead
`
`has waited until all of the institution decisions have been put into place. Now, LabCorp seeks
`
`this stay within two months of the last institution decision – this Court dissuades seeking stays
`
`until all applicable institution decisions are made by the PTAB. Finally, Quest did not seek
`
`preliminary injunctive relief against LabCorp for the alleged infringement. Any delay in
`
`litigation resulting from a stay does not alone constitute undue prejudice, and there would be no
`
`tactical advantage or disadvantage imposed by a stay in this case.
`
`Fourth, as seen in the recently filed joint Stipulation for Extension of Time (D.I. 129-1),
`
`key witnesses from both parties, including an inventor on three of the patents, are directly
`
`involved in the development of testing in response to the COVID-19 pandemic. Both parties
`
`operate laboratories on a nationwide basis, and these witnesses are at the forefront of the parties’
`
`respective responses to the pandemic. A stay would temporarily relieve the burden of litigation
`
`on these witnesses.
`
`IV.
`
`STATEMENT OF FACTS
`
`A.
`
`The Asserted Claims
`
`In its April 12, 2019 Disclosures Pursuant to Paragraph 4(c) of the Default Standard for
`
`Discovery, Plaintiff alleged infringement of claims 1–24 of the ’862 Patent (directed to detection
`
`of testosterone by mass spectrometry); and claims 1–6, 9–11 of the ’427 Patent and claims 9–13
`
`of the ’868 Patent (both directed to detection of Vitamin D metabolites by mass spectrometry)
`
`(collectively, the “Asserted Claims”).3 In the ’862 Patent IPR, LabCorp sought review of claims
`
`3 Quest also asserted claims 21-25, 28, and 31 of the ’867 Patent. The ’867 Patent IPR was not
`instituted by the PTAB and LabCorp’s request for rehearing is pending. See n.1 supra.
`
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`1, 2, and 4-14; the PTAB instituted IPR on all of the challenged claims. See Ex. A at 31. In the
`
`’427 Patent IPR, LabCorp sought review of claims 1-11; the PTAB instituted review on all of the
`
`challenged claims. See Ex. B at 25. In the ’868 Patent IPR, LabCorp sought review of claims 1,
`
`and 9-14; the PTAB instituted review on challenged claims 9-14.4 This means that for the
`
`patents subject to IPR, nearly all of the Asserted Claims are subject to review by the PTAB,
`
`including all asserted claims from the ’427 and ’868 Patents. A summary is below:
`
`Patent
`
`Asserted Claims
`
`Claims Subject to IPR
`
`’862 Patent
`
`’427 Patent
`
`’868 Patent
`
`Claims 1-24
`
`Claims 1-6, 9-11
`
`Claims 9-13
`
`Claims 1, 2, 4-14
`
`Claims 1-11
`
`Claims 9-14
`
`Quest’s preliminary infringement contentions were served before the benefit of
`
`discovery. Now that technical documents have been produced, those documents show that the
`
`accused tests do not employ High Turbulent Liquid Chromatography (HTLC), which is an
`
`element in claims 3 and 15-24 of the ’862 Patent and claim 7 of the ’427 patent. Thus, virtually
`
`all of the Asserted Claims likely to be at issue at trial are being considered in the instituted IPRs.
`
`B.
`
`The Parties’ Efforts in COVID-19 Response
`
`In the Stipulation for Extension of Time, Quest explained that Dr. Nigel Clarke, “a Quest
`
`employee who is a named inventor on three of the four patents in suit, and Quest’s Rule 30(b)(6)
`
`designee for technical topics related to all four patents, is fully committed on an emergency basis
`
`to Quest’s COVID-19 response, and has been since the crisis began.” (D.I. 129-1 at ¶ 8.)
`
`Similarly, LabCorp explained that Drs. Russ Grant and Brett Holmquist, “both LabCorp
`
`4 Prior to institution, Quest disclaimed claim 1 of the ’868 patent.
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`employees with knowledge of the technologies at issue in the case, are directly involved with
`
`LabCorp’s COVID-19 testing efforts, including development” of testing. (Id. at ¶ 8.) As a
`
`result, the parties agreed that these witnesses, including Quest’s key employee and Rule 30(b)(6)
`
`designee, are “unavailable for deposition for the foreseeable future.” (Id. at ¶ 8.)
`
`V.
`
`ARGUMENT
`
`District courts have inherent authority to control the disposition of the cases on its docket,
`
`including the discretion to stay judicial proceedings pending IPR. See First Am. Title Ins. Co. v.
`
`Maclaren, LLC, No. 10-cv-363 (GMS), 2012 WL 769601, at *4 (D. Del. Mar. 9, 2012); see also
`
`Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1426–27 (Fed. Cir. 1988). Whether to stay litigation
`
`pending IPR is a matter left to the Court’s discretion. See Novartis AG v. HEC Pharm Co., 183
`
`F. Supp. 3d 560, 562 (D. Del. 2016) (Stark, J.); Neste Oil OYJ v. Dynamic Fuels, LLC, No. 12-
`
`1744-GMS, 2013 WL 3353984, at *1 (D. Del. July 2, 2013). Delaware courts have consistently
`
`granted stays of pending IPR during the discovery period. See, e.g., Peschke Map Techs., LLC v.
`
`J.J. Gumberg Co., 40 F. Supp. 3d 393, 396 (D. Del. 2014) (granting IPR stay during ongoing
`
`discovery); Softview LLC v. Apple Inc., No. 12-989-LPS, 2013 WL 4757831, at *2 (D. Del. Sept.
`
`4, 2013) (granting IPR stay after fact discovery and Markman).
`
`In exercising their broad discretion, courts typically consider three factors in a stay
`
`analysis: “(1) whether granting the stay will simplify the issues for trial; (2) the status of the
`
`litigation, particularly whether discovery is complete and a trial date has been set; and (3)
`
`whether a stay would cause the non-movant to suffer undue prejudice from any delay, or allow
`
`the movant to gain a clear tactical advantage.” Found. Med., Inc. v. Guardant Health, Inc., No.
`
`17-807-LPS-CJB, 2018 WL 950261, at *1 (D. Del. Feb. 15, 2018). Here, each factor supports a
`
`stay.
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`A.
`
`A Stay Pending IPR is Likely to Simplify the Issues For Trial
`
`A stay to allow the PTAB to complete the LabCorp IPRs will result in a simplification of
`
`issues as nearly all of the Asserted Claims from three of the four Asserted Patents are subject to
`
`review. “Whatever outcome occurs [in an IPR proceeding], there is the potential for the
`
`simplification of issues for trial, either by reducing the number of claims at issue, confirming the
`
`validity of the surviving claims, or narrowing the scope of a modified claim.” Ever Win Int’l
`
`Corp. v. RadioShack Corp., 902 F. Supp. 2d 503, 505-06 (D. Del. 2012).
`
`No matter the outcome of an IPR, “the results of the reexamination proceeding will aid in
`
`simplifying or eliminating the overlapping issues before the court…[i]ndeed, even if the PTO
`
`were to ultimately confirm all of the claims, the court would likely benefit from the expert
`
`analysis the PTO conducts, thus further simplifying the issues before the court.” Celorio v. On
`
`Demand Books LLC, No. 12-821-GMS, 2013 WL 4506411, at *1 n. 1 (D. Del. Aug. 21, 2013).
`
`Courts in this District have, in fact, articulated specific ways a PTO proceeding can simplify
`
`issues for the district court, including consideration of prior art by the PTAB with its particular
`
`expertise, the potential to encourage settlement, and reduction of costs. See Neste Oil OYJ, 2013
`
`WL 3353984, at *4. While LabCorp acknowledges that a fourth patent (the ’867 Patent) in the
`
`case is not subject to an IPR, a stay to allow the other IPR proceedings to complete will still
`
`result in significant savings; for example, the ’867 Patent addresses similar subject matter as the
`
`’427 and ’868 Patents (i.e., detection of Vitamin D metabolites by mass spectrometry).
`
`Here, resolution of the LabCorp IPRs will simplify the issues before the Court. As 80%
`
`of the PTAB’s final written decisions find some or all claims unpatentable – with 62% finding all
`
`claims unpatentable – there is a strong likelihood that any claim the PTAB decides to review will
`
`be cancelled or modified, streamlining the issues for this Court and the parties. See Patent Trial
`
`& Appeal Bd., Trial
`
`Statistics:
`
`IPR, PGR, CBM,
`
`at
`
`10
`
`(Mar.
`
`2020),
`
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`https://www.uspto.gov/sites/default/files/documents/trial_statistics_20200331.pdf. Therefore, a
`
`ruling on LabCorp’s IPRs by the PTAB will reduce, or indeed moot, issues that the Court
`
`otherwise have to decide regarding fact and expert discovery, and dispositive motions. See
`
`Alloc, Inc. v. Unilin Decor N.V., No. Civ. A. 03-253-GMS, 2003 WL 21640372, at *2 (D. Del.
`
`July 11, 2003). Even in the very unlikely event that no claims are found invalid by the PTAB,
`
`the Court will have the benefit of the Patent Office’s analysis, performed by subject matter
`
`experts, that may eliminate certain pieces of prior art from the instant litigation. See 454 Life
`
`Scis. Corp. v. Ion Torrent Sys., Inc., No. 15-595-LPS, 2016 WL 6594083, at *3 (D. Del. Nov. 7,
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`2016).
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`Finally, estoppel principles may narrow the invalidity defenses for presentation at trial,
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`including from raising validity challenges “on any ground that the petitioner raised or reasonably
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`could have raised during that inter partes review.” 35 U.S.C. § 315(e)(2); see also Sirona Dental
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`Sys. GmbH v. Dental Wings Inc., No. 14-460-LPS-CJB, at *10-12 (D. Del. Mar. 22, 2016); AIP
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`Acquisition LLC v. Level 3 Commc'ns, LLC, No. 12-1688-GMS, 2014 WL 12642000, at *2 (D.
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`Del. Jan. 9, 2014). That estoppel may limit the issues and evidence that can be presented at trial,
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`and the parties and the Court would surely recognize cost and time savings as a result.
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`For all the reasons stated above, the simplification factor weighs in favor of a stay.
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`B.
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`The Stage of Litigation Favors a Stay
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`Staying a case in its early stage advances judicial efficiency and prevents the court and
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`the parties from expending resources on claims that may be rendered invalid. See Contour IP
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`Holding, LLC v. GoPro, Inc., C.A. No. 15-1108LPS-CJB, 2016 WL 4474340, at *3 (D. Del. July
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`14, 2016). This factor examines the extent to which “the most significant case events…are in the
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`future, not the past.” SenoRx, Inc. v. Hologic, Inc., No. 12-173-LPS-CJB, 2013 WL 144255, at
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`*5 (D. Del. Jan. 11, 2013).
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`With fact discovery not closing until July 2020, and fact depositions still to come, this is
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`an appropriate stage of the case to enter into a stay while the LabCorp IPRs are decided. No
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`depositions have yet been conducted, and as discussed above, three key witnesses, including
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`Quest’s Rule 30(b)(6) designee on technical topics – and the inventor of three of the four
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`Asserted Patents – are heavily burdened by their respective roles in the response to COVID-19
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`and will not be available for depositions in the immediate timeframe.5 Expert discovery has not
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`yet started. Dispositive motions are not due until the end of the year; there will be no sunk costs
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`in such briefing in light of a stay. And the parties have already stated that they “agree to reassess
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`the situation by June 26, 2020, and to provide a status update to the Court at that time,” which
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`suggests the potential for further delay is likely. Courts in this district have found the stage of the
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`litigation favored stays in cases where parties were still in a similar stage of discovery as they are
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`here. See, e.g., CallWave Commc'ns, LLC v. AT & T Mobility, LLC, No. 12-1701-RGA, 2015
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`WL 1284203, at *1 (D. Del. Mar. 18, 2015) (granting a stay, finding the stage of litigation
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`favored a stay where few depositions had been taken and expert discovery had not yet begun);
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`Peschke Map Techs., 40 F. Supp. 3d at 396 (granting a stay pending IPR despite that fact
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`discovery and the Markman briefing were complete and trial set for later in the year).
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`Thus, because fact discovery is still ongoing and expert discovery has yet to begin, the
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`Court and parties will be able to realize significant benefits from a stay by avoiding the
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`potentially needless cost and effort of continuing to litigate issues relating to the Asserted
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`5 Recently, a court in the Central District of California found that impacts of the COVID-19
`pandemic on the schedule, including possible delays to hearings and trials, is “a relevant
`consideration” to this factor. Ex. E, DivX, LLC v. Netflix, Inc., No. CV19-1602 PSG, slip op. at
`5 (C.D. Cal. May 11, 2020). As the COVID-19 pandemic has already impacted this case from a
`scheduling perspective, and will continue to do as key personnel from each party works on
`testing responses, the pandemic is certainly relevant to the stage of these proceedings.
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`Patents. In addition, a stay at this stage would alleviate specific burdens on specific employees
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`who are critical to both party’s COVID-19 response and the issues in this matter.
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`Accordingly, the stage of the case weighs in favor of a stay.
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`C.
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`A Stay Will Not Unduly Prejudice Plaintiffs or Present Clear Tactical
`Advantage for Defendants
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`A stay in this litigation will not unduly prejudice Quest. To the contrary, a stay would
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`allow the parties, including Quest, to avoid the burden of duplicative, needless proceedings as set
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`forth above. Indeed, the LabCorp IPRs present a strong likelihood of eliminating multiple
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`claims, or even one or more patents, from this case, significantly simplifying the issues and
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`disputes for the parties and the Court.
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`Mere delay in litigation “does not, by itself, establish undue prejudice.” Neste Oil OYJ,
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`2013 WL 424754, at *2 (emphasis in original); see also Celorio, 2013 WL 4506411, at *1 n.1
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`(“[T]he mere possibility of resulting delay is not dispositive and is insufficient to establish that a
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`party will be ‘unduly’ prejudiced.” (citation omitted)). In evaluating the potential prejudice of a
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`stay, this Court has analyzed four factors: “(1) the timing of the request for review; (2) the timing
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`of the request for stay; (3) the status of the review proceeding; and (4) the relationship of the
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`parties.” Princeton Dig. Image Corp. v. Konami Dig. Entm’t Inc., No. 10-389-LPS, 2014 WL
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`3819458, at *4 (D. Del. Jan. 15, 2014); Contour, 2016 WL 4474340, at *4.
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`Balancing these factors, the potential prejudice of a stay (or lack thereof) also favors
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`granting the requested partial stay.
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`1.
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`The LabCorp IPRs Were Timely Filed.
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`“The more diligent a defendant is in seeking inter partes review, the less likely it is that
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`the non-movant will be prejudiced by a stay or that the court will find the defendant’s filing of
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`the IPR petition to be a dilatory tactic.” Bonutti Skeletal Innovations, L.L.C. v. Zimmer
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`Holdings, Inc., No. 12-CV-1107 (GMS), 2014 WL 1369721, at *2 (D. Del. Apr. 7, 2014). Here,
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`LabCorp was unquestionably diligent, as all but one of the LabCorp IPRs were filed well-within
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`the one-year statutory deadline:
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` The ’862 Patent IPR was filed on February 25, 2019, five months after the date of
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`the Complaint.
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` The ’427 Patent IPR was filed on July 29, 2019, ten months after the date of the
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`Complaint.
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` LabCorp’s petition directed to the ’867 Patent, which was not instituted, was filed
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`on August 19, 2019, eleven months after the date of the Complaint.
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` The ’868 Patent IPR was filed on September 17, 2019, one year after the date of
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`the Complaint.
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`Trial before the PTAB for the ’862 patent was instituted on September 4, 2019; the ’427
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`patent was instituted on February 6, 2020; and the ’868 patent was instituted on March 20, 2020.
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`Courts in this District have consistently granted stays pending IPR when defendants have
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`filed their petitions within the one-year timeframe provided by 35 U.S.C. § 315(b). See, e.g.,
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`SunPower Corp. v. PanelClaw, No. 12-1633-GMS, 2014 WL 12774919, at *3 (D. Del. May 16,
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`2014) (filing IPR one day before statutory expiration date was not dilatory); Princeton Dig.
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`Image, 2014 WL 3819458, at *4-5 (granting stay where the defendant filed the IPR petition
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`“almost a year to the day after