InMode Ltd. v. BTL Industries, Inc. (D. Mass. 24-cv-12955).

InMode sued BTL in October 2023, asserting infringement of a patent related to vaginal remodeling technology and methods.  The suit was originally filed in the Central District of California, but following jurisdictional discovery, the California court granted BTL’s motion to transfer the case to the District of Massachusetts.  In the meanwhile BTL filed a petition for inter partes review of the patent, which was instituted by the PTO on October 2, 2024.  BTL subsequently moved to stay the litigation pending the outcome of the IPR proceeding.

Judge Saris granted the motion. She noted that two of the three factors, the stage of the litigation and the likelihood that the stay would simplify the issues to be tried, favored a stay.  The litigation, while nearly a year old when the motion to stay was filed, had entailed only jurisdictional and venue-related discovery, with all of the patent-related issues still subject to discovery, and the IPR proceeding would almost certainly inform or simplify the issues to be tried, as all of the claims of the sole patent were being reviewed by the PTO.  As to the the third factor, whether a stay would unfairly prejudice or present a clear tactical disadvantage to InMode, while the two businesses were direct competitors with respect to the patented technology, InMode failed to show that it had suffered loss of substantial market share through sales of the accused product or that monetary damages would be insufficient to compensate for any infringing sales that were to take place during the pendency of the stay.