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Magistrate Judge Wicks Stays Litigation Before IPR Institution in Skin-Tightening Dispute

On April 6, 2022, U.S. Magistrate Judge James M. Wicks (E.D.N.Y.) granted Defendant Cartessa Aesthetics, LLC’s (“Cartessa”) motion to stay the litigation pending the resolution of IPRs filed against each of the five asserted patents. Plaintiffs Synkloud Technologies, LLC and Serendia, LLC (collectively, “Plaintiffs”) brought suit against Cartessa in August 2021, alleging infringement of five patents generally directed to “radio frequently microneedling devices used for medical and aesthetic dermatological treatment for tightening skin.” Slip Op. at 1.

Plaintiffs served their disclosure of asserted claims on December 16, 2021. On December 28, Cartessa filed IPR petitions challenging three of the five patents-in-suit, with institution decisions expected by July 19, 2022. On February 11, 2022, Cartessa filed IPR petitions challenging the remaining two patents, with institution decisions expected by September 2022.

Cartessa moved to stay the litigation pending the outcome of the IPR petitions, which the Court analyzed under the familiar three-factor test: “(1) whether a stay will simplify the issues in question and trial of the case; (2) the state of the proceedings; and (3) whether a stay will prejudice the nonmoving party.” Slip Op. at 3.

First, Judge Wicks held that “[a]ny of the conceivable potential outcomes of [the] IPR[s] will lead to a simplification of the present case by rendering claims moot or narrowing the issues,” especially because Cartessa challenged every asserted claim. Slip Op. at 4. Judge Wicks refused to consider “[t]he timing of the PTO’s decision on whether to institute proceedings,” finding that those facts are “more appropriately [considered] under the undue prejudice factor[].” Slip Op. at 5. For those reasons, the Court held that the stay would simplify the case and weighed in favor of a stay.

On the second factor, Judge Wicks noted that “the parties’ initial scheduling order was modified and discovery deadlines were extended,” so that “minimal discovery has taken place, no depositions have been noticed, and the Markman process is months away.” Slip Op. at 5. The Court held that this factor, too, weighed in favor of a stay.

Finally, Judge Wicks addressed undue prejudice, examining four sub-factors. The Court held that the first two factors – the timing of the IPR petition request and the timing of the request for a stay – both favor Cartessa, which filed its petitions soon after the filing of the complaint and filed its motion to stay immediately thereafter.

Regarding the third subfactor – the status of the review proceeding – the Court noted that “Courts across the country are split as to whether filing a motion to stay is premature if a petition is filed with the PTO, but a decision on whether to institute has not yet been rendered.” Slip. Op. at 7. Judge Wicks held that “the better course is to allow the PTO to apply its expertise to these proceedings before considerable judicial resources are expended.” Id. In order to “streamline the patent system and eliminating counterproductive litigation costs,” Judge Wicks therefore held that this factor, too, “heavily leans toward favoring a stay.” Id.

Finally, Judge Wicks considered the relationship of the parties. Although the parties are competitors, they co-exist in a multi-competitor market, which “undermines the risk of undue prejudice from factors such as loss of market value.” Slip Op. at 8. In addition, Plaintiffs waited over three-and-a-half years to sue Cartessa after sending a demand letter in February 2018 regarding their patent claim. The Court held that Plaintiffs’ “proffered rationale for not filing suit earlier and not moving for injunctive relief is not persuasive,” and therefore held that the parties’ relationship, “even though as competitors, is insufficient on its own to deny the issuance of a stay.” Slip Op. at 9.

The Court therefore granted Cartessa’s motion to stay the action pending resolution of the five IPR petitions.

The case is Synkloud Technologies, LLC, and Serendia, LLC v. Cartessa Aesthetics, LLC, No. 21-cv-4423 (GRB) (JMW) (E.D.N.Y.).