District Judge F. Dennis Saylor IV anesthetized Boston Heart Diagnostics Corp.’s patent infringement suit against Health Diagnostics Laboratory, Inc. in Massachusetts federal court, staying the case pending an ex parte reexamination of the patent filed by Health Diagnostics. The case involves U.S. Patent No. 8,455,194, covering claims on diagnostic methods for detecting the susceptibility of an individual to muscular pain or weakness caused by various statin-based cholesterol medications.

Calling it “at best, a very close call,” the Court found sufficient cause to stay the case, applying a three-part test derived from earlier district court decisions of 1) whether a stay would unduly prejudice or tactically disadvantage Boston Heart; 2) whether a stay would simplify the issues in question and trial; and, 3) consideration of the stage of litigation. The Court found particularly persuasive the potential benefits of the Patent Office’s analysis of the patent during reexamination and the efficiencies that could be derived therefrom – despite the fact that the reexamination might only resolve issues with regard to seven claims of the ’194 patent, leaving seven additional claims which are not part of the reexamination to be litigated regardless of the result. Also weighing in favor of a stay was that the reexamination request had been filed two weeks before the lawsuit, and that neither a scheduling conference nor any discovery had taken place to date in the suit. On the other side of scale, the Court found reason to believe Boston Heart would suffer harm from a failure to resolve the lawsuit because of its direct competition from Health Diagnostics, even though it had not sought a preliminary injunction.

In the end, taking all the factors on balance, the Court ordered the case stayed, leaving Boston Heart to now await the outcome of the reexamination before it can be revived.

The case is Boston Heart Diagnostics Corp. v. Health Diagnostics Lab., Inc., Civ. No. 13-13111-FDS (D. Mass.).