InMode Ltd. v. BTL Industries, Inc.

UNITED STATES DISTRICT COURT

DISTRICT OF MASSACHUSETTS

___________________________________

)

INMODE LTD., )

)

Plaintiff, )

)

v. ) Civil Action

) No. 24-cv-12955-PBS

BTL INDUSTRIES, INC. d/b/a BTL )

AESTHETICS, )

)

Defendant. )

)

ORDER

March 27, 2025

Saris, D.J.

Plaintiff InMode Ltd. (“InMode”) has sued BTL Industries,

Inc. (“BTL”) for infringement of U.S. Patent No. 8,961,511 (“the

’511 patent”). Six months after InMode filed suit, BTL filed a

petition for inter partes review (“IPR”) with the Patent Trial and

Appeal Board (“PTAB”). On October 2, 2024, the PTAB instituted IPR

on all claims of the ’511 patent. BTL now moves to stay this

lawsuit pending completion of the IPR for the ’511 patent. After

a hearing and review of the briefs, the affidavit of Brandon Nye,

Vice President of Sales at Invasix Inc. (a wholly owned subsidiary

of InMode), and the parties’ supplemental filings, the Court stays

this action pending IPR.

As part of its “inherent power to manage its docket by staying

proceedings,” a district court may “stay an action pending the

resolution of a related matter in the” PTAB. Aplix IP Holdings

Corp. v. Sony Comput. Ent., Inc., 137 F. Supp. 3d 3, 4 (D. Mass.

2015) (quoting In re SDI Techs., Inc., 456 F. App’x 909, 911 (Fed.

Cir. 2012) (order)). Courts “consider three factors in determining

whether to stay an action pending [IPR]: 1) the stage of the

litigation, including whether discovery is complete and a trial

date has been set, 2) whether a stay will simplify the issues and

3) whether a stay will unduly prejudice or present a clear tactical

disadvantage to the nonmoving party.” Mizuho Orthopedic Sys.,

Inc. v. Allen Med. Sys., Inc., 610 F. Supp. 3d 362, 365 (D. Mass.

2022); see Murata Mach. USA v. Daifuku Co., 830 F.3d 1357, 1361

(Fed. Cir. 2016). Delay in resolving the lawsuit is not enough by

itself to constitute undue prejudice. See Mizuho Orthopedic Sys.,

Inc., 610 F. Supp. 3d at 365. Instead, courts ask whether “1) on

account of the delay [the nonmoving party] effectively will be

denied certain legal remedies, 2) the moving party possesses a

dilatory motive or 3) the parties are direct commercial

competitors.” Id.

The first two factors weigh in favor of a stay. Before BTL

filed its initial motion to stay in October 2024, the parties had

engaged only in preliminary, albeit drawn-out, skirmishing

relating to venue. See VirtualAgility Inc. v. Salesforce.com,

Inc., 759 F.3d 1307, 1317 (Fed. Cir. 2014) (“Generally, the time

of the motion [to stay] is the relevant time to measure the stage

of litigation.”). Even now, the case remains “in its incipient

stages,” with merits discovery just beginning and claim

construction, summary judgment motions, and a trial well in the

future. Koninklijke Philips N.V. v. Amerlux, LLC, 167 F. Supp. 3d

270, 274 (D. Mass. 2016); see Aplix IP Holdings Corp., 137 F. Supp.

3d at 5.

A stay will also simplify the issues in the case because the

PTAB has instituted IPR for all the claims in the sole patent

asserted in this lawsuit. See Gratuity Sols., LLC v. Toast, Inc.,

No. 22-cv-11539, 2024 WL 1770816, at *4 (D. Mass. Apr. 24, 2024);

Aplix IP Holdings Corp., 137 F. Supp. 3d at 5; cf. VirtualAgility

Inc., 759 F.3d at 1314 (making the same point in the context of a

Covered Business Method (“CMB”) patent review). It is true that

BTL has raised certain affirmative defenses and counterclaims in

this suit that the PTAB will not address. See 35 U.S.C. § 311(b)

(describing the scope of IPR); Dkt. 91-2 at 9 (listing the

invalidity grounds at issue in the IPR). However, the PTAB’s

cancelling of any claims in the ’511 patent will moot InMode’s

allegations that BTL is infringing those claims and, if any claims

survive IPR, BTL will be estopped in this suit from presenting any

invalidity “ground that [it] raised or reasonably could have raised

during [IPR].” 35 U.S.C. § 315(e)(2); see Gratuity Sols., LLC,

2024 WL 1770816, at *4; Aplix IP Holdings Corp., 137 F. Supp. 3d

at 5. In determining that this factor favors a stay, the Court

declines InMode’s request to assess the merits of the invalidity

grounds that BTL is pressing in the IPR. See NST Glob., LLC v. SIG

Sauer Inc., No. 19-cv-792, 2020 WL 1429643, at *4 n.5 (D.N.H. Mar.

24, 2020); cf. VirtualAgility Inc., 759 F.3d at 1313 (cautioning

district courts against “review[ing] the PTAB’s decisions to

institute a CBM proceeding” when resolving a motion to stay).

InMode’s strongest argument against a stay is that the parties

are direct competitors and, thus, that it will suffer undue

prejudice during the duration of the stay. InMode has presented

convincing evidence that the parties are direct competitors at

least as to their products that use radiofrequency to treat female

genital tissue, i.e., InMode’s FormaV handpiece and BTL’s EmFemme

360 applicator. But Nye’s affidavit does not demonstrate that

InMode has or is likely to lose substantial market share due to

sales related to BTL’s EmFemme 360. While Nye believes InMode has

lost some sales as a result of the introduction of the EmFemme

360, he has provided only a few possible examples. Monetary damages

will provide adequate compensation for any lost sales that InMode

suffers during the stay, which is expected to last only until

October 2025. See 35 U.S.C. § 316(a)(11) (setting a one-year

deadline for the PTAB’s resolution of an IPR); cf. VirtualAgility

Inc., 759 F.3d at 1318 (“A stay will not diminish the monetary

damages to which [the plaintiff] will be entitled if it succeeds

in its infringement suit -- it only delays realization of those

damages and delays any potential injunctive remedy.”). Nor is the

Court persuaded that BTL has engaged in dilatory tactics or that

InMode is likely to suffer undue prejudice from the loss of

evidence. In the Court’s experience, a ruling by the PTAB

substantially simplifies patent disputes and is well worth the

wait.

Accordingly, BTL’s motion to stay this action pending IPR

(Dkt. 112) is ALLOWED. The parties shall file a joint status report

within fourteen days of the PTAB’s issuance of a final

determination in the IPR.

SO ORDERED.

/s/ PATTI B. SARIS__________

Hon. Patti B. Saris

United States District Judge