On November 24, 2009, District Judge Jose L. Linares granted defendant River’s Edge’s motion to stay the litigation pending reexamination of the patent-in-suit U.S. Patent No. 7,560,123 (’123 Patent) associated with ex parte control number 90/009,575. Claims of the ‘123 Patent cover plaintiff Everett’s Select-OB® prescription prenatal multivitamin product. At the time the stay was granted a request for preliminary injunction by Everett was pending, seeking to enjoin River’s Edge from continuing to market and sell Edge OB, a product Everett contends is an “identical lower cost” version of Everett’s established and patented Select-OB® brand product.

Read the Court Order: Motion for Stay Pending Reexamination; 2009-11-24; Granted; District Judge Jose L. Linares; Everett Laboratories, Inc. v.River’s Edge Pharmaceuticals, LLC. (2-09-cv-03458) NJD

River’s Edge filed a request for ex parte reexamination of the ‘123 Patent on September 18, 2009 based largely on Everett’s alleged failure to disclose several prior art references including one of its own products (Vitafol®PN). On October 23, 2009 the USPTO granted the request. River’s Edge filed the motion to stay three days later.

Read USPTO Order: 90009575 – Order Granting Request for Ex Parte Reexamination – Mailed 10-23-2009

The Court weighed three factors in its decision to grant the stay (see Stays). In assessing whether a stay would unduly prejudice River’s Edge or present a clear tactical disadvantage to Everett, the Court admitted, but declined to give weight to the irreparable harm alleged in Everett’s request for preliminary injunction. The Court observed that such claims “are meaningless” unless Everett can demonstrate a reasonable likelihood of success on the merits, which is countered by the invalidity defense raised by River’s Edge and the USPTO’s grant of ex parte reexamination.

The Court was careful to note that while the USPTO’s decision to reexamine the ‘123 Patent in light of Vitafol®PN is not dispositive on the issue of validity, it nevertheless viewed the SNQ as significant given that River’s Edge is basing its invalidity defense on Everett’s failure to disclose Vitafol®PN as a prior art reference during the prosecution of the ‘123 Patent. The Court was not persuaded that delay based on the pendency of the reexamination before the USPTO demonstrated undue prejudice because the proceeding “serves the interests of correctness and finality by assuring that any decision by the PTO as to the relevance of the Vitafol®PN prior art (as it relates to Defendants’ obviousness defense) can be taken into account by this Court prior to its decision on Everett’s application for a preliminary injunction.”

Second, without much discussion, the Court concluded that the case would be simplified if the litigation was stayed pending reexamination of certain claims with respect to the ‘123 Patent in light of Vitafol®PN. Lastly, the Court concluded that the case is in its early stages (i.e., the complaint was filed July 14, 2009, motions to dismiss had been briefed recently, no pretrial scheduling order had been entered, and parties had engaged in limited disclosures). As such “pausing” for a stay at this time would curtail discovery activities and all three factors weighed in favor of granting a stay.

The case is Everett Laboratories, Inc. v.River’s Edge Pharmaceuticals, LLC., case number 2-09-cv-03458, in the United States District Court of New Jersey.