Free Motion to Stay - District Court of Delaware - Delaware

Case 1:07-cv-00753-JJF

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE ROCHE DIAGNOSTICS OPERATIONS, INC. and CORANGE INTERNATIONAL LIMITED, Plaintiffs, v. ABBOTT DIABETES CARE INC., ABBOTT DIABETES CARE SALES CORPORATION, BAYER HEALTHCARE, LLC, DIAGNOSTIC DEVICES, INC., LIFESCAN, INCORPORATED, and NOVA BIOMEDICAL CORPORATION, Defendants. Civil Action No. 07-753-JJF

DEFENDANTS ABBOTT DIABETES CARE INC.'S AND ABBOTT DIABETES CARE SALES CORP.'S MOTION TO STAY PENDING REEXAMINATION OF THE PATENTS-IN-SUIT On November 21, 2007, Plaintiffs Roche Diagnostics Operations, Inc. and Corange International Limited (collectively "Roche") filed this action against Abbott Diabetes Care Inc. and Abbott Diabetes Care Sales Corporation (collectively "Abbott"), as well as several other entities, asserting infringement of two recently-issued patents: United States Patent Nos. 7,276,146 and 7,276,147 (collectively "the patents-in-suit"). On December 14, 2007, less than one month after it was served with Roche's Complaint, and approximately two months after the patents-in-suit issued, Abbott filed two requests with the United States Patent and Trademark Office ("PTO") seeking ex parte reexamination of all the claims in the patents-in-suit.

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As of the filing date of this motion, none of the defendants has answered or otherwise responded to the Complaint. The Court has granted Abbott an extension of time to January 11, 2008, to file an answer or other response to the Complaint. At this time, the Court has not entered a scheduling order or set a trial date. The Court has ordered the parties to appear for a scheduling conference, pursuant to Federal Rule of Civil Procedure 16(b), on February 8, 2008, at 11:30 a.m. The parties have not yet exchanged the information required by Federal Rule of Civil Procedure 26(a)(1) and District of Delaware Local Rule 16.2, nor has any party requested or taken any discovery. Consequently, Abbott hereby respectfully moves that this Court stay these proceedings until the requests are either denied or until reexamination of the asserted patents is concluded. The Court should enter the requested stay for the following reasons: 1. The historical evidence regarding past reexaminations demonstrates that the PTO

will most likely invalidate or substantially alter the claims of the patents-in-suit. Such an outcome will likely narrow or resolve the issues in this case. 2. Abbott has made its request for a stay at the very outset of this action ­ before the

Court has entered a discovery and/or trial schedule, before the parties have taken or requested any discovery, and before the defendants have even answered or otherwise responded to the Complaint. Thus, granting the stay will conserve the maximum amount of resources that would otherwise be expended on prosecution of this action. 3. This is purely a patent infringement case. It does not involve any claims requiring

a trial that are not linked to the patent infringement claim. Plaintiff Roche will not be prejudiced by the entry of a stay pending the outcome of the two reexamination proceedings. Indeed, in

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE ROCHE DIAGNOSTICS OPERATIONS INC. and CORANGE INTERNATIONAL LIMITED, Plaintiffs, v. ABBOTT DIABETES CARE INC., ABBOTT DIABETES CARE SALES CORPORATION, BAYER HEALTHCARE, LLC, DIAGNOSTIC DEVICES, INC., LIFESCAN, INCORPORATED, and NOVA BIOMEDICAL CORPORATION, Defendants. Civil Action No. 07-753-JJF

[PROPOSED] ORDER GRANTING DEFENDANTS ABBOTT DIABETES CARE INC.'S AND ABBOTT DIABETES CARE SALES CORP.'S MOTION TO STAY PENDING REEXAMINATION OF THE PATENTS-IN-SUIT At Wilmington this ___________ day of ___________________, 2008, having considered Defendants Abbott Diabetes Care Inc.'s And Abbott Diabetes Care Sales Corp.'s Motion To Stay Pending Reexamination Of The Patents-In-Suit and related papers, IT IS HEREBY ORDERED that Defendants Abbott Diabetes Care Inc.'s And Abbott Diabetes Care Sales Corp.'s Motion To Stay Pending Reexamination Of The Patents-In-Suit is GRANTED. This case is hereby stayed (1) until the United States Patent and Trademark Office denies Defendants' requests for reexamination of United States Patent Nos. 7,276,146 and 7,276,147; or (2) until completion of the reexamination of United States Patent Nos. 7,276,146 and 7,276,147, whichever is later. _______________________________ Judge Joseph J. Farnan, Jr.

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