`MED-EL ELEKTROMEDIZINISCHE
`GERATE GES.M.B.H., et al.,
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`Plaintiffs,
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`Case No. 1:18-cv-01530-JDW
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`v.
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`ADVANCED BIONICS, LLC,
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`Defendant.
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`ORDER
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`AND NOW, this 1st day of March, 2021, upon consideration of Plaintiffs MED-EL
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`Elektromedizinische Geräte Ges.m.b.H.’s and MED-EL Corporation, USA’s Motion For Partial
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`Stay Pending Resolution Of The MED-EL IPRs (D.I. 139), the Court notes as follows.
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`1.
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`“Courts have inherent power to manage their dockets and stay proceedings,
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`including the authority to order a stay pending conclusion of a PTO [proceeding].” Ethicon, Inc.
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`v. Quigg, 849 F.2d 1422, 1426-27 (Fed. Cir. 1988) (citations omitted). “This Court has typically
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`considered three factors when deciding a motion to stay: (1) whether granting the stay will simplify
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`the issues for trial; (2) the status of the litigation, particularly whether discovery is complete and a
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`trial date has been set; and (3) whether a stay would cause the non-movant to suffer undue
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`prejudice from any delay, or allow the movant to gain a clear tactical advantage.” Toshiba
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`Samsung Storage Tech. Korea Corp. v. LG Elecs., Inc., 193 F. Supp. 3d 345, 348 (D. Del. 2016).
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`2.
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`Having considered these factors, as well as the particular facts of this case, the
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`Court will deny MED-EL’s motion. The Court determines that this is the better approach here, for
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`the reasons set forth below.
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`IPR2021-00044
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`1
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`Ex. 3002
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`3.
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`The PTAB has not instituted IPR proceedings as to MED-EL’s second petition
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`concerning the ‘746 Patent or as to the ‘847 Patent. Thus, any expected simplification of issues
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`related to the challenged claims therein “rests on speculation that such institution will occur.”
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`Universal Secure Registry, LLC v. Apple Inc., No. 17-cv-585, 2018 WL 4486379, at *2 (D. Del.
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`Sept. 19, 2018); see also Advanced Microscopy Inc. v. Carl Zeiss Microscopy, LLC, No. 15-cv-
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`516, 2016 WL 558615, at *2 (D. Del. Feb. 11, 2016) (“If no review is instituted, the asserted basis
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`for a stay will fall away.”); Copy Prot. LLC v. Netflix, Inc., No. 14-cv-365, 2015 WL 3799363, at
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`*1 (D. Del. June 17, 2015). Thus, this factor does not weigh in favor of a stay.
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`4.
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`The PTAB’s final decisions on the pending IPR proceedings could simplify the
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`issues for trial, but MED-EL waited too long to seek a stay pending those proceedings. “‘[T]he
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`ideal time’ to file a motion to stay is ‘shortly after the PTAB issue[s] its decision to proceed with
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`a validity trial on all of the Asserted Claims.’” Universal, 2018 WL 4486379 at *2 (quotation
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`omitted). MED-EL waited nearly eight months after the PTAB instituted the IPR proceedings for
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`the ‘681 Patent and the ‘747 Patent to seek a stay.
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`5.
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`MED-EL claims it waited until “there was a critical mass of asserted claims under
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`review” in an effort to avoid seeking “piecemeal relief” (D.I. 144 at 8), but MED-EL created the
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`present piecemeal situation by filing staggered IPR petitions. The Court does not agree that now,
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`with two IPR proceedings almost at their end and two others uncertain as to whether they even
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`will begin, demonstrates the type of inflection point that MED-EL claims. In addition, AB’s
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`counterclaims had been pending for over a year by the time MED-EL sought a partial stay of this
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`matter. The Court had already conducted a Markman hearing and construed the Parties’ disputed
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`claim terms, discovery was underway, and the Court had handled various discovery-related issues.
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`While it is true that much work still remains to be done in this matter, “this case is no longer in an
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`early stage of proceedings[.]” See Space Data Corp. v. Alphabet Inc., No. 16-cv-3260, 2019 WL
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`IPR2021-00044
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`2
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`Ex. 3002
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`1131420, at *3 (N.D. Cal. Mar. 12, 2019) (quotation omitted). Given the fact that the PTAB’s
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`decisions on the ‘681 and ‘747 Patents are due little more than three months from now, the Court
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`sees no significant efficiency to be gained by granting a partial stay of the case until the PTAB
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`issues its remaining IPR decision in December 2021. Indeed, that decision will implicate only one
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`of the six patents at issue in AB’s counterclaims. See id. (denying partial stay where IPR claim
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`represented “a relatively small portion of the overall case”). Thus, the status of this matter weighs
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`against the entry of a partial stay at this time.
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`6.
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`Finally, due to current pandemic-related restrictions, AB will be prejudiced if a
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`window of opportunity arises to depose MED-EL’s Austrian-based witnesses (perhaps in the
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`spring and summer months), and it cannot question them about patents subject to a stay. Aside
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`from the uncertainty about when another deposition opportunity would arise (given the ever-
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`evolving nature of COVID-19 restrictions), AB would suffer undue prejudice by having to depose
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`the same witnesses a second time, whenever that may be. Thus, the prejudice factor also weighs
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`against a partial stay of this matter.
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`Therefore, for the reasons stated above, MED-EL’s Motion For Partial Stay Pending
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`Resolution Of The MED-EL IPRs (D.I. 139) is DENIED.
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`BY THE COURT:
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`/s/ Joshua D. Wolson
`JOSHUA D. WOLSON, J.
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`3
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`IPR2021-00044
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`3
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`Ex. 3002
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