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  • Writer's pictureShelly Albaum

The Endless Stay in Delaware

On September 17, 2018, ChromaDex sued Elysium for patent infringement, in the United States District Court for the District of Delaware.

The case was assigned to brand new Trump appointee Colm Connolly.

Judge Connolly, sporting a deer-in-the-headlights look in his Wikipedia entry, was appointed US Attorney by GW Bush in 2001. Bush's attempt to appoint Connolly to the federal bench in 2008 was blocked by Delaware Senator Joe Biden. Connolly then went to work for union-busting law firm Morgan Lewis, until he received his judicial commission as a Trump appointee on August 3, 2018.

On October 23, 2018, Elysium answered ChromaDex's patent infringement complaint.

On November 7, 2018, Elysium moved to stay the Patent Infringement Action.

Elysium offered three reasons for a stay. First, the Court should wait until the the IPR proceeding was resolved on the '086 patent, which would happen in January. Second, the Court should wait until the Patent Misuse claim in California was resolved, which would happen in July. Third, under the First-to-File rule, California should hear the Patent Infringement action, instead of Delaware.

On November 21, 2018, ChromaDex's opposition brief explained to the Court why Elysium's stay request should be denied. First, the '807 Patent isn't being challenged before the PTAB. Second, resolution of the Patent Misuse claim doesn't impact liability for infringement, only the timing of damages, and infringement still needs to be adjudicated. Third, First-to-File doesn't even apply, because the actions are not close to parallel.

And, at the heart of the matter, said ChromaDex, "A stay would severely prejudice ChromaDex and provide a tactical advantage to Elysium in light of their competitive relationship." Refusing to adjudicate an infringer's infringement is essentially a license to infringe, which defeats the entire purpose of patent law and the federal court system. "A stay delaying the ultimate resolution of ChromaDex’s patent-infringement claims will only serve to allow Elysium to further erode ChromaDex’s sales to, and goodwill with, existing and potential customers. As courts have recognized, such losses are often irreparable."

ChromaDex requested oral argument on the stay motion.

And then came silence.

Instead of rejecting Elysium's argument as an attempt to delay reckoning day for its behavior with respect to a patent that is not even in dispute; instead of denouncing Elysium's Patent Misuse argument as impertinent because it does not address the need to adjudicate infringement; instead of expressing incredulity that Elysium would argue the first-filed rule with respect to an utterly non-parallel transaction or intimate at transfer to a case that is preparing for trial -- which would just lead to more delay -- the court said nothing.

Two months later, the PTAB ruled that Claim 2 of the '086 patent was not anticipated, which means that Elysium's alleged infringement of both patents needs to be adjudicated.

Into the silence, on January 17, 2019, ChromaDex sent a letter to Judge Connolly, in which ChromaDex pointed out that Elysium's far-fetched theory that the PTAB would in the '086 proceeding define "isolated" in such a way as to bring the '807 patent into doubt had been disproved. In addition, Elysium's theory that the '086 patent might be completely invalidated and removed from the infringement action was also negated. "Neither of these predicates now exists," said ChromaDex, so please rule on the stay motion.

Elysium wrote a letter to Judge Connolly, too, a few days later, and said that they intended to appeal the PTAB's decision to the Court of Appeals for the Federal Circuit (CAFC), so isn't the filing of a notice of appeal by itself good cause for an extra year of infringement, especially when combined with some other patently bogus theories -- I paraphrase aggressively!. Elysium's exact words were more like:

If the Federal Circuit reverses the challenged claim construction of claim 2, the ’086 patent will be removed from this case altogether...Importantly, the PTAB’s ruling in the ’086 IPR has no bearing on Elysium’s request that this case be stayed pending resolution of Elysium’s patent misuse counterclaim...

And Elysium added, "Plaintiffs previously requested oral argument on the pending stay motion. Elysium has no objection to Plaintiffs’ request if the Court believes a hearing would be helpful."

And the silence continued.

No ruling; no oral argument, no scheduling conference; not a single docket entry.

On Monday morning, April 8, 2019, there will have passed 152 days since Elysium filed its motion for stay.

Is that a long time for a federal judge to ignore a motion to stay? Is that WAY TOO LONG for a federal judge to ignore a motion to stay?

Thanks to the power of Westlaw Edge*, we can get a decent answer to that question.

In the infographic above, you can see how long it takes experienced federal judges in five different districts -- including the District of Delaware -- to resolve pending motions.

There is a BIG range in time-to-resolve on motions to dismiss.

Judge Cormac Carney (who is handling our California matter) is a judicial speed demon, resolving motions to dismiss on average in just 36 days. Judge Pallmeyer in Chicago is also fast, resolving motions to dismiss on average in 71 days. More typical are Judges Koh, McMahon (who is handling our matter in New York), and Andrews, who take on average 106, 143, and 154 days to resolve motions to dismiss.

Judge Connolly's 152 days to resolve our stay motion, therefore, appears to be longer than average for most judges -- if this were a motion to dismiss.

But this isn't a motion to dismiss; it is a motion to stay, which is a very different beast.

The reason motions to stay are different is because if you don't rule on the motion to stay, that's the same as granting it, only without even considering the motion or explaining the decision. That's blind justice in the bad way.

So we are not surprised that Judge McMahon, who may take a several months on average to resolve a motion to dismiss, gives motions to stay a very high priority. She resolves them on average in just 10 days. And she's REALLY busy.

Judge Pallmeyer, too, gives priority to stay motions, resolving them on average in just 18 days. And you can see in histogram that her median time is even faster than that.

Judges Carney, Koh, and Andrews resolve stay motions in 31, 42, and 57 days respectively, on average.

Note EVERYBODY resolves stay motions faster than they resolve motions to dismiss -- much faster.

So one 152 days to resolve a stay motion appears to be an outrageous level of delay, almost three times longer than the longest average in our sample.

It is possible, of course, that our case is an outlier in that it presents issues of such intricate complexity that Judge Connolly and his clerks are dumbstruck by the enormity of the challenge.

It doesn't look that way to me, though.

To me, it looks like you've got an obvious infringer, two patents that have survived PTAB review, and two obviously specious arguments for delay (Patent Misuse, which is inapposite, and First-to-File, which is inapplicable).

And a Judge who can't manage his docket.

Our best case scenario would be if the Chief Judge in Delaware transfers our case to a different judge, just as Judge McMahon did in New York when Judge Caproni was unable to get to it. That way we can at least get a resolution. Double points if it gets transferred to a judge who has tried a patent case at least once in their life.

Worst case scenario is that Judge Connolly grants the stay without argument and without explanation. He is free to do so. He can just make a minute order on the docket say, "Stay motion is granted, come back in a year or so, or never; I don't care."

He is free to do that, and if he does that on Monday morning, then the motion will have been resolved in 152 days.

It is an awesome thing to have a lifetime appointment, and it is the reason that the legal profession and the Senate and the Executive Branch used to take very seriously the professional qualifications and reputation of those whom they would appoint to the federal bench. Although ambassadors and state judgeships often go to political cronies, the federal judiciary was more sacred. No more.

So let's suppose on Monday morning Judge Connolly grants Elysium's stay request for no expressed reason, or for some bad reason, like he finds the case entirely disturbing to his digestion and would rather not think of it.

Then ChromaDex would at least get a chance to appeal the decision the the United States Court of Appeals. The odds of a reversal there would not be great, because federal judges are entitled great latitude to manager their docket, and the standard of review is probably abuse of discretion rather than de novo review -- although there certainly is a plethora of cases in which the CAFC reversed district courts on stay decisions in patent proceedings.

If Judge Connolly grants Elysium's stay, and the CAFC doesn't reverse it, despite the obvious prejudice to ChromaDex, which is an important fact, and despite Elysium's manifest inability to demonstrate a likelihood of success in its appeal to the CFAC (on the contrary, I would bet Elysium will lose ground on its appeal), and despite the tenuous nature of Elysium's arguments, then the only consolation for ChromaDex will be to watch Judge Connolly's decision attract an army of yellow-flag "disagreed," "distinguished," and "decline to follow" treatments on KeyCite over time. Small consolation, and Judge Connolly won't lose any sleep over it.

But it's hard to appeal a decision that hasn't been rendered, and I'm not sure it's possible to appeal a judge's refusal to resolve an urgent motion. In any case, challenging the judge's refusal to judge would be a sure way to get on his bad side.

So we wait.


* The better firms use Westlaw for legal research, and the best firms used the best version of Westlaw. I'm always surprised when big firms charging big prices use cut-rate tools to do their work. I doubt you'd find Cooley, Steptoe, Skadden, or Baker Hostetler fiddling around with Lexis, which is why it's surprising to see Foley Hoag's stay motion -- the one discussed in this article -- just riddled with Lexis-only cites (8 of the 14 cites in the TOA are Lexis-only). One possibility is that the Foley Hoag attorneys don't know to use Westlaw. More frequently, though, the answer lies in the C-suite, where a bean-counting law firm administrator will impose on its attorneys every time-wasting inconvenience, and if the attorneys are forced to bill extra hours to make up for cutting with a dull knife, well, all the better. DISCLAIMER: I have worked on and for Westlaw for most of the past 30 years, so I know that of which I speak. The superiority of Westlaw is probably judicially noticeable, since in so many jurisdictions that's what the judges use.

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