United States District Court, D. Massachusetts
KONINKLIJKE PHILIPS N.V. and PHILIPS ELECTRONICS NORTH AMERICA CORPORATION, Plaintiffs,
ZOLL MEDICAL CORPORATION, Defendant.
MEMORANDUM & ORDER
Nathaniel M. Gorton, United States District Judge
bifurcated patent infringement case defendant Zoll Medical
Corporation ("Zoll") moves to postpone the trial on
damages scheduled for July, 2017 because of the prolonged
reexamination of the subject patents in the Patent and
Trademark Office ("PTO"). Zoll also moves to set
deadlines for plaintiffs Koninklijke Philips, N.V. and
Philips Electronics North America Corporation (collectively,
"Philips") to seek leave to file amended or new
expert damage reports. For the reasons that follow, both
motions will be denied.
patent case involves external defibrillators. In June, 2010,
Phillips filed suit against Zoll for infringement of its
waveform patents (the '454, '905, '212 and
'978 patents), self-test patents (the '460 and
'374 patents) and CPR instructions patent (the '785
patent). Zoll denied infringement and counterclaimed for
infringement of its electrode patent (the '526 patent)
and defibrillator patent (the '187 patent).
This Court bifurcated the liability and damages phases of the
December, 2013, after a vigorously contested jury trial, the
Court submitted the validity and infringement issues to the
jury. With respect to Philips' patents, the jury did not
address the validity of the '212 patent, which was not
contested, but otherwise found that all of the contested
claims in the '212, '454, '905 and '460
patents were valid and directly infringed by Zoll's
products and that all of the disputed claims in Philips'
'374 patent were valid and some were directly infringed.
respect to the Zoll patents, the jury found that the disputed
claims of the '187 and '526 patent were
valid, all of the claims of the '187 patent
were directly infringed and most of the disputed claims of
the '526 patent were directly infringed.
Court denied both parties' motions for judgment as a
matter of law and both parties appealed.
January, 2015, the Court granted Zoll's motion to
continue the damages trial pending the appeal even though the
parties had already exchanged damages expert reports. In
July, 2016, the Federal Circuit Court of Appeals affirmed, in
part, reversed, in part, vacated, in part, and remanded the
case for a new liability trial on the contested claims in
Zoll's '526 electrode patent. This Court lifted the
stay and scheduled the damages trial to commence on July 24,
in 2015, Zoll requested the PTO to reexamine the validity of
the claims based on the Philips' waveform '454,
'905 and '212 patents. The PTO did so and issued
final rejections of the claims with respect to the '454
and '212 patents. Philips has now appealed those
rejections to the Patent Trial and Appeal Board and, in
September, 2016, Zoll again moved to stay the damages trial
pending the completion of the reexamination. Zoll also moved
to set deadlines for Philips to seek leave to file any
amended or new damages expert reports. This memorandum
addresses the pending motions.
II. Motion to Stay
well established that
[c]ourts have inherent power to manage their dockets and stay
proceedings including the authority to order a stay pending
conclusion of a PTO reexamination.
Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1426-27 (Fed. Cir. 1988) (citation omitted). While
courts have the power to grant a stay if there is a pending
reexamination, they are not required to do so. Viskase
Corp. v. Am. Nat. Can Co., 261 F.3d 1316, 1328
(Fed. Cir. 2001). The decision to grant a stay lies within a
court's discretion. Id. In evaluating whether a
stay is appropriate, courts consider the following factors:
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  and [the] trial of the case;
and 3) whether discovery is ...