When Plaintiffs Exit Market and Are No Longer Direct Competitor of Defendants Stay Pending Reexamination Is Justified as Plaintiffs Can No Longer Show Prejudice: Wyeth v. Abbott Laboratories

February 17, 2012

In this patent action, Defendants filed a renewed motion to the stay the proceedings pending an inter partes reexamination of the patents-in-suit. The district court had previously denied a similar motion over a year earlier. In the renewed motion, the Defendants contended that circumstances had changed since the district court's earlier decision and new factors weighed in favor of staying the action pending the reexamination.

These changed facts included that the Plaintiffs have withdrawn from the drug-eluting stent business and, therefore, the parties are no longer competitors in the stent market. In the earlier decision, the district court had found that the Plaintiffs would have prejudiced by a stay because the parties were direct competitors. The risk of that prejudice no longer existed. The Defendants also noted that the reexamination had progressed and that the PTO had rejected every claim on multiple independent grounds. In addition, discovery was in its earliest stages and no trial date was set.

The district court then analyzed the request by applying 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 a result of these changed circumstances, the district court revisited the prior decision and determined that a stay was now warranted. "Because Plaintiffs are no longer competing in the stent business against Defendants, a stay will not unduly prejudice Plaintiffs. Being that all of the claims of the asserted patents stand rejected, it is likely that the reexamination proceeding will simplify the issues in the case. Finally, fact discovery is in a relatively early stage and the case is far from being ready for trial."

Accordingly, the district court stayed the case pending the completion of the reexamination.


Wyeth v. Abbott Laboratories, Case No. 09-4850 (JAP) (D.N.J. Feb. 6, 2012)

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