After Judge Carney postponed the trial in California, ChromaDex asked Judge Connolly in Delaware to lift the stay and allow the patent infringement case to proceed. The Delaware case had been stayed pending the outcome in California -- but with further delay in California and no outcome in sight, the original justification for the stay was undercut or eliminated.
Elysium responded by arguing that the stay should not be lifted -- further delay was warranted -- because Judge Carney would resolve the matter soon enough, and because in any case Judge Connolly would want to extend the stay further to wait for the CAFC, which, Elysium disingenuously asserted, had expressed a determination to resolve the PTAB appeal as soon as January. In fact, the CFAC merely asked counsel for calendar conflicts between January and June, and did not state that it would resolve the appeal as soon as January, or ever. We were expecting ChromaDex to carve up Elysium's arguments into a fine gruel.
Today we got ChromaDex's reply. You can read it here:
It was about as fierce a reply as we expected:
Elysium’s opposition to Plaintiffs’ motion to lift the stay ignores clear legal precedent, mischaracterizes the parallel proceedings, and does not even attempt to address the facts raised in Plaintiffs’ opening brief. Trial in the California Litigation has been postponed indefinitely, with a trial date to be set only after the California court resolves the issues raised on summary judgment. Maintaining the stay in this case until a trial has been conducted in California would result in a far longer stay than contemplated when Elysium’s motion to stay was granted. Moreover, even if Elysium were successful in California in its contention that the Trademark License and Royalty Agreement constituted patent misuse—which now appears even less likely given the California court’s October 9 order—Supreme Court and Federal Circuit precedent makes clear that Elysium’s success would serve only to limit damages until any such misuse was purged, and would not render the patent unenforceable for all time.
Similarly, it is speculative at best to assume the Federal Circuit will accept Elysium’s arguments in its appeal of the IPR proceedings, which are based on a claim construction that has already been rejected multiple times. Maintaining the stay on such speculative grounds when the Federal Circuit has not even scheduled oral argument would again result in a stay far longer than originally contemplated. Further, Plaintiffs’ infringement claims as to the ’807 patent will remain in any event, because that appeal will not determine the validity of the ’807 patent, notwithstanding Elysium’s conclusory and incorrect assertions to the contrary. Thus, this case—which was filed more than 14 months ago—will still proceed in full as to at least one of the two asserted patents. Maintaining the stay until after some as-yet-undetermined date will only further prejudice Plaintiffs. Accordingly, Plaintiffs respectfully request that the stay, which was “a close call” when it was entered and the duration was relatively brief and certain, be lifted.
Also worth noting,
Tellingly, while Elysium labels Plaintiffs’ recitation of facts as “false and misleading” (Opp. Br. at 3-4), Elysium nevertheless fails to refute a single statement, let alone demonstrate any statement is false or misleading. In fact, Elysium does not even attempt to address the facts raised in Plaintiffs’ opening brief. Elysium seeks to dismiss them as not relevant, but Elysium overlooks that these facts are directly relevant to the substantially increased prejudice to Plaintiffs arising from the changed circumstances since the stay was entered. (Op. Br. at 13- 18.) Accordingly, an increased duration of the stay significantly increases the prejudice to Plaintiffs, and this factor weighs more heavily against a stay now than it did when the stay was entered.
Conclusion
They stay should be lifted. That's not quite a prediction, because the stay should never have been granted in the first place. But certainly ChromaDex has made a strong case and there are ample grounds for His Honor to now lift the stay and allow the patent infringement case to finally proceed.