The District Court granted Transcend's motion for summary judgment on the issue of non-infringement and denied the patent owner's, Glaukos', motion on the issue of inequitable conduct. The District Court then set a bench trial on the issue of inequitable conduct.

In light of these rulings, Glaukos argued that the inequitable conduct trial should be postponed because the infringement ruling resolved the gravamen of the dispute between the parties and a trial on the inequitable conduct issue would be a waste of resources and potentially unnecessary in the event that the infringement ruling is affirmed on appeal.

The parties agreed that, following summary judgment of non-infringement, district courts have the discretion to dismiss any remaining inequitable conduct and invalidity claims without prejudice to allow an appeal of the non-infringement judgment to go forward. Glaukos urged that the district court should exercise that discretion and dismiss Transcend's inequitable conduct claim without prejudice to allow it an opportunity to appeal the non-infringement ruling.

The district court concluded that a bench trial on inequitable conduct should proceed for several reasons. First, the district court noted that "the parties have expended substantial resources preparing for trial and are close to being prepared to try this case. Presumably, all necessary witnesses have arranged their schedules so that they may attend. Postponement of the trial so that the appeal process can play out in the Federal Circuit could, depending on the outcome in that court, require the parties to prepare for trial a second time. In short, a trial date that is only three weeks away weighs against postponement."

Second, the district court reasoned that "the inequitable conduct trial is a bench trial and will not involve a lengthy jury selection process. The parties have also indicated that the trial will likely only last four to five days and there is significant overlap between the parties' witnesses. In fact, each of Transcend's five witnesses appear on Glaukos' witness list as well. Although Glaukos indicates that it will call an additional five witnesses, counsel stated that the witnesses in common represent the majority of Glaukos' primary witnesses."

Third, the district court determined that "proceeding to trial on the inequitable conduct claim will serve to provide more clarity regarding the parties' positions in the event that the infringement ruling is reversed on appeal. Relatedly, reaching final judgment on all of the claims raised in this case will avoid the potential for piecemeal appellate litigation."

The district court also explained that it planned to reach a decision by the end of the year so that "proceeding with the inequitable conduct trial as scheduled may assist the Federal Circuit in considering both the non-infringement and inequitable conduct decisions together" as the appeal on the non-infringement ruling had not yet been filed.

Transcend Medical, Inc. v. Glaukos Corp., Case No. 13-830 (D. Del. Nov. 2, 2015)