Sirona Dental Systems GMBH, et al. v. Dental Wings Inc., et al., C.A. Nos. 14-460 – LPS-CJB; 14-540 – LPS-CJB; 15-278 –LPS-CJB, March 22, 2016.

Burke, M. J. Defendants’ motion to stay in three related cases pending IPR is granted.

The disputed technology relates to a drill assistance device for a tooth implant.  In April and May, 2015, separate IPR petitions were filed asking the PTAB to review all claims of the patent-in-suit.  In October, the PTAB issued its decision in one case to institute review of all but claim 8 of the disputed patent; in November it instituted review of all claims in the second proceeding. Plaintiff has filed conditional motions to amend its claims. On January 20, 2016, two additional defendants petitioned to institute an IPR on all claims of the disputed patent. The institution decision is expected within 3 months after receipt of plaintiff’s response. The court finds there is a significant possibility of simplification of issues for trial. These cases, despite their early filing dates, are still in the early stages of litigation where such motions are most often granted.  While defendants may have contributed to the delay, the court does not find inappropriate conduct.  The IPR proceedings will issue in October and November, 2016, well before trial schedule in October 2017.  While there is some evidence a stay could cause some competitive harm to plaintiff, the lack of evidence as to the extent and nature of competitive injury results in this subfactor weighing against a stay, but more weakly than it might have with a fuller record.