Case: 13-148 Document: 23 Page: 1 Filed: 08/02/2013
NOTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
__________________________
IN RE MEDICAL COMPONENTS, INC.,
Petitioner.
__________________________
Miscellaneous Docket No. 148
__________________________
On Petition for Writ of Mandamus to the United
States District Court for the District of Utah in No. 12-
CV-0032, Judge Robert J. Shelby.
__________________________
ON PETITION
__________________________
Before RADER, Chief Judge, BRYSON, and WALLACH,
Circuit Judges.
BRYSON, Circuit Judge.
ORDER
Medical Components, Inc. (Medcomp) seeks a writ of
mandamus directing the district court to vacate the
portion of its order staying proceedings involving its
counterclaim for patent infringement, or alternatively, an
order directing the district court to dismiss the claim
without prejudice. C.R. Bard, Inc. (Bard) opposes the
petition.
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IN RE MEDICAL COMPONENTS, INC. 2
I.
Medcomp and Bard are competitors in the medical
device industry. Each holds patents on implantable
access ports that permit the infusion of medicine or fluids
throughout the body; Bard owns U.S. Patent Nos.
7,947,022 (the ’022 patent), 7,785,302 (the ’302 patent),
and 7,959,615 (the ’615 patent); and Medcomp owns U.S.
Patent No. 8,021, 324 (the ’324 patent).
In January 2012, Bard filed the underlying action, al-
leging that Medcomp had infringed the ’022, ’302, and
’615 patents. Medcomp counterclaimed against Bard for
infringement of its own ’324 patent.
In August 2012, a third party requested that the Pa-
tent and Trademark Office (PTO) conduct a reexamina-
tion of Bard’s patents, prompting the district court to
temporarily stay proceeding in the instant case. The PTO
subsequently determined that the request raised a sub-
stantial new question concerning the patentability of
Bard’s patents and began a reexamination.
Shortly after the PTO issued initial office actions re-
jecting a number of Bard’s claims, Medcomp moved the
district court to continue the stay as to Bard’s claims, but
to allow Medcomp’s counterclaim of patent infringement
to proceed. In response, Bard argued that the full case
should be stayed pending reexamination, noting that the
prior art asserted against both patents “will be extremely
similar, if not identical,” and that “the claim construction
and discovery issues relevant to Medcomp’s counterclaims
will substantially overlap with those for Bard’s claims.”
The motion was referred to a magistrate judge, who
agreed with Bard that the entire case should be stayed.
The magistrate’s December 2012 order noted that Med-
comp “acknowledged the relatedness of its patent to the
Bard patents by listing them as prior art to the Medcomp
patent-in-suit . . . . [And that] all of the patents at issue
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3 IN RE MEDICAL COMPONENTS, INC.
here share similar claim terms and similar prior art.”
The order further explained that “the USPTO’s actions
concerning the Bard patents-in-suit may narrow issues
relevant to Medcomp’s counterclaim.”
The district court sustained the magistrate judge’s
stay ruling over Medcomp’s objections. The court further
denied Medcomp’s alternative request to dismiss the
counterclaim without prejudice, noting that Medcomp “is
seeking an end run around the stay and the court is not
inclined to encourage such forum shopping.”
Medcomp then filed this petition for a writ of manda-
mus, asserting jurisdiction under 28 U.S.C. § 1651.
II.
A.
Medcomp first takes issue with the portion of the dis-
trict court’s order staying its counterclaim pending the
PTO reexamination proceedings involving Bard’s patents.
The decision to stay litigation is one committed to the
sound discretion of the trial court. See Gould v. Control
Laser Corp., 705 F.2d 1340, 1341 (Fed. Cir. 1983); see also
Landis v. North Am. Co., 299 U.S. 248, 254-55 (1936).
Importantly, on mandamus review our role is not to
second-guess the trial court’s decision to stay; instead, we
look only to see whether a “rational and substantive legal
argument can be made in support of the rule in ques-
tion[.]” In re Cordis Corp., 769 F.2d 733, 737 (Fed. Cir.
1985); see also Bankers Life & Cas. Co. v. Holland, 346
U.S. 379, 383 (1953) (mandamus is appropriate only if
there is a “clear abuse of discretion”).
When measured against this exacting standard, the
petitioners have not shown entitlement to relief. It is well
settled that district courts have “inherent” authority to
“control the disposition of the causes on its docket with
economy of time and effort for itself, for counsel, and for
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IN RE MEDICAL COMPONENTS, INC. 4
litigants.” Landis, 299 U.S. at 254. Here, there is at least
a plausible argument that can be made in light of the
similarity of the prior art and technology that a stay of
the entire matter could be more efficient than allowing
the counterclaim alone now to go forward.
Citing Landis, Medcomp argues that the district court
applied an incorrect legal standard by failing to require
Bard to demonstrate a “clear case of hardship or inequity”
before staying the litigation involving its counterclaim.
299 U.S. at 255. The Third Circuit has rejected this
understanding of Landis, see Commonwealth Insurance
Co. v. Underwriters, Inc., 846 F.2d 196, 199 (3d Cir. 1988),
and so do we. Landis held that under circumstances
where a litigant would be “compelled to stand aside while
a litigant in another settles the rule of law that will define
the rights of both,” the movant must “make out a clear
case of hardship or inequity[.]” 299 U.S. at 255. In this
case, however, it is without dispute that the PTO reexam-
ination proceedings of Bard’s patents will not decide the
rights at issue in Medcomp’s counterclaim.
Nor can we say that the district court failed to give
consideration to Medcomp’s interest in timely pursuing its
infringement claim. In addressing the comparative
harms, the magistrate concluded that Medcomp had
“presented no evidence that a stay of its counterclaim
would cause it harm that Bard could not compensate it
for, either practically or theoretically.” Although a stay of
proceedings is made more complicated by the fact that
Medcomp’s complaint seeks injunctive relief, we are
satisfied that the district court considered all relevant
interests, and would presumably reconsider the matter if
sufficient evidence warranting temporary injunctive relief
were presented.
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5 IN RE MEDICAL COMPONENTS, INC.
B.
Medcomp alternatively seeks mandamus to direct the
district court to dismiss its counterclaim without preju-
dice under Fed. R. Civ. P. 41(a)(2). The decision to deny a
party’s motion for voluntary dismissal is committed to the
discretion of the trial court. See Minnesota Mining &
Mfg. Co. v. Barr Labs., Inc., 289 F.3d 775, 779 (Fed. Cir.
2002); Brown v. Baeke, 413 F.3d 1121, 1123 (10th Cir.
2005). Medcomp argues that the district court clearly
abused that discretion by withholding relief absent a
finding of prejudice to Bard.
In response to Medcomp’s motion for voluntary dis-
missal, Bard pointed out that it had already expended
significant time, money, and resources in responding to
the counterclaim, engaging in motions practice, conduct-
ing discovery and preparing for claim construction, and
could be forced to bear the additional costs associated
with participating in multiple litigations if the motion for
voluntary dismissal was granted. Bard further pointed
out that it would be a significant waste of resources to try
these claims separately given the amount of overlap in
evidence and issues. Because these arguments could
rationally support a finding of legal prejudice to Bard
sufficient to deny Medcomp’s motion for voluntary dismis-
sal, see Ohlander v. Larson, 114 F.3d 1531, 1537 (10th
Cir. 1997), we are not prepared to say that Medcomp has
met the exacting standard necessary to grant this ex-
traordinary relief.
Accordingly,
IT IS ORDERED THAT:
The petition for a writ of mandamus is denied.
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IN RE MEDICAL COMPONENTS, INC. 6
FOR THE COURT
/s/ Daniel E. O’Toole
Daniel E. O’Toole
Clerk
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