Medline Industries, LP v. C.R. Bard, Inc., Civil Action No. 1:20-CV-03981-JPB (N.D. Ga. Sept. 25, 2020)

The Special Master Needle recently filed his Report and Recommendation regarding Plaintiff Medline’s Motion to Stay the N.D. Ga. Action pending the outcome of a related case pending in the Northern District of Illinois, which is set for trial in April, 2023. Seeking to accelerate the conclusion of this long-running saga, the Special Master recommended denying Medline’s Motion to Stay.

Filed in 2014, Medline Industries, LP v. C.R. Bard, Inc., Civil Action No. 1:14-CV-03618 (“Medline I”) involves the same patent asserted in this case: U.S. Patent No. 8,448,786, entitled “Catheter Tray, Packaging System, Instruction Insert, and Associated Methods” (“the ’786 Patent”). The accused products in Medline I are SureStep Foley Kits produced by Bard.  Two additional actions were subsequently filed in the Northern District of Illinois asserting the ’786 Patent and several other patents involving similar technologies (“Medline II and III”). Then, in 2020, Medline tried and failed to amend its Final Infringement Contentions in Medline I to include a new Redesigned SureStep Foley Kit recently brought to market by Bard.  When the Northern District of Illinois rejected its attempt to include the Redesigned SureStep Foley kit in that action, Medline filed Medline IV in the Northern District of Georgia alleging infringement of the ’786 Patent by the Redesigned SureStep Foley Kit.

In the report, the Special Master recommended denying Medline’s motion to stay Medline IV because Medline’s position in that motion “contradicts the prior position taken by Medline in the Medline I case.” Special Master’s Report at 4.  Specifically, in opposing a motion to enjoin the subsequent Medline IV action filed by Bard in Medline I, Medline argued that the requested injunction was appropriate because the claims at issue in Medline IV are not duplicative of Medline I. There, the court agreed and denied Bard’s motion to enjoin Medline IV.

But Medline took a different position in its Motion to Stay Medline IV and the Special Master highlighted that contradiction. “Now, Medline tells this Court that the [Original and Redesigned] kits are essentially the same.” “[E]ntry of final judgment . . . in Medline I will thus have issue-preclusive effects on multiple core issues pending in Medline IV.” See Brief in Support of Medline’s Motion to Stay (Doc. 98-1). Relying on Medline’s position in their response to Bard’s motion to enjoin in Medline I, the Special Master disagreed with Medline’s argument that resolution of Medline I would have a preclusive effect on Medline IV and resolve the infringement and claim construction issues pending in that case. “While a stay of patent litigation may be appropriate in certain circumstances, the co-pending Medline I suit and [Medline IV] are neither duplicative nor dependent on one another, [so] there is neither any need nor any justification for the stay.” See Special Master’s Report at 17–18.

As of this article’s publication date, the court has not determined whether to adopt the Special Master’s Report. Medline has, however, filed an objection to the report and continues to push for a stay in Medline IV. For now, the Medline/Bard saga continues to be delayed despite the Special Master’s best efforts.