Acantha LLC v. NuVasive, Inc. ( 2020 )

UNITED STATES DISTRICT COURT EASTERN DISTRICT OF MICHIGAN SOUTHERN DIVISION ACANTHA LLC, Plaintiff, Case No. 19-cv-10656 Hon. Matthew F. Leitman v. NUVASIVE, INC., Defendant. __________________________________________________________________/ ORDER DENYING WITHOUT PREJUDICE DEFENDANT’S MOTION TO STAY PROCEEDINGS (ECF No. 32) On March 5, 2019, Plaintiff Acantha LLC filed this patent-infringement action against Defendant NuVasive, Inc. (See Compl., ECF #1.) NuVasive moved to dismiss Acantha’s claims pursuant to Federal Rule of Civil Procedure 12(b)(6), and the Court denied that motion. (See Mot. to Dismiss, ECF No. 17; Order Denying Mot. to Dismiss, ECF No. 25.) Following the Court’s denial of NuVasive’s motion to dismiss, NuVasive filed two petitions for inter partes review (“IPR”) before the United States Patent Trial and Appeal Board (the “PTAB”). (See IPR Petitions, ECF Nos. 32-3, 32-4.) In the IPR petitions, NuVasive challenges “all 60 claims of [United States Patent No. RE43,808 – the patent at issue in this case] that Acantha has asserted against NuVasive in this litigation.” (Mot., ECF No. 17, PageID.541.) NuVasive has now filed a motion in which it asks this Court to stay the proceedings here while NuVasive pursues relief in front of the PTAB. (See id.) Acantha opposes the requested stay. (See Acantha Resp., ECF No. 33.) District courts “have the broad discretion to determine whether a stay is appropriate” pending the conclusion of an IPR proceeding. Regents of Univ. of Mich. v. St. Jude Med., Inc., 2013 WL 2393340, at *2 (E.D. Mich. May 31, 2013.). The party seeking a stay has the “burden of showing that the circumstances justify the exercise of that discretion.” Service Solutions U.S., LLC v. Autel.US Inc., 2015 WL 401009, at *1 (E.D. Mich. Jan. 28, 2015). When determining whether to grant such a stay, the Court considers “(1) whether discovery is complete and whether a trial date has been set; (2) whether a stay will simplify the issues in question and trial of the case; and (3) whether a stay would unduly prejudice or present a clear tactical disadvantage to the non-moving party.” Regents of Univ. of Mich., 2013 WL 2393340, at *2. The Court is not yet persuaded that a stay is appropriate. NuVasive filed its IPR petitions on March 13, 2020, and the PTAB is not scheduled to make a decision on whether to institute those proceedings until September. Because it is unknown whether IPR proceedings will ever be instituted, it is not yet clear to the Court whether a stay would simplify the issues in dispute. Nor is it apparent today whether a stay would conserve judicial resources. Accordingly, the Court DENIES NuVasive’s motion WITHOUT PREJUDICE. If the PTAB decides to institute IPR proceedings on one or both of NuVasive’s pending IPR petitions, NuVasive may file a renewed motion for a stay at that time. IT IS SO ORDERED. s/Matthew F. Leitman MATTHEW F. LEITMAN Dated: June 3, 2020 UNITED STATES DISTRICT JUDGE I hereby certify that a copy of the foregoing document was served upon the parties and/or counsel of record on June 3, 2020, by electronic means and/or ordinary mail. s/Holly A. Monda Case Manager (810) 341-9764