Stay Pending Reexamination Granted in Synthes v. Smith & Nephew, Inc. (EDPA)

August 23rd, 2009

[July 13, 2009] Judge C. Darnell Jones II granted a motion to stay proceedings pending reexamination of the patents-in-suit in the District Court for the  Eastern District of Pennsylvania in the matter of Synthes (U.S.A.) v. Smith & Nephew, Inc. The case involves U.S. Patent No. 6,623,486 (’486 Patent) and 7,128,744 (’744 Patent).  The Court’s order did not address the status of the reexamination requests.   The Court identified the factors to determine whether to grant a stay pending reexamination as (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.   (Read the Court’s Order Granting the Stay:  Synthes v. Smith & Nephew (pdf))

The Court’s entire analysis was stated as ‘[a]lthough the Court is mindful of the lengthy history of this case, the Court finds in its discretion that, on balance, the relevant factors weigh in favor of granting the Motion to Stay in the interests of justice.  First, a stay will likely result in some (perhaps significant) simplification or elimination of issues in this case.  Second, despite the setting of a trial date and conduct of discovery, much remains to be completed in this case, including nine summary judgment motions, a motion for bifurcation, pretrial filings, trial preparation, and trial; as such a stay pending reexamination is likely to reduce the costs for both parties.  Third, both parties have fair arguments as to prejudice or lack thereof and the Court concludes that issue is not outcome determinative.” (footnotes omitted)

The Case is Synthes (U.S.A.) v. Smith & Nephew, Inc., civil action No. 03-0084 in the United States District Court of the Eastern District of Pennsylvania.