Medmix Switzerland AG v. Kettenbach GMBH & Co. KG

Patent Infringement Claim Is Denied Severance But Is Stayed Pending Inter Pares Review

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MEMORANDUM AND ORDER Presently before the Court in this false advertising-patent infringement-unfair competition case are Plaintiff medmix Switzerland AG’s (formerly known as Sulzer Mixpac AG) (“Plaintiff” or “Medmix”) motion to sever and stay the patent infringement claim asserted in this action, Count III, see Docket Entry (“DE”) [93] (“Plaintiff’s Motion” or “Pl. Mot.”), and Defendants Kettenbach GmbH & Co. KG’s (“Kettenbach GmbH”), Kettenbach LP’s and Xinial Systems GmbH & Co. KG’s (“Xinial”, collectively “Defendants”) cross-motion to stay the action in its entirety, see DE [94] (“Defendants’ Cross-Motion” or “Defs. Cross-Mot.”). By way of Complaint (“Compl.”), DE [1], filed on November 26, 2021, Plaintiff commenced this action alleging: (i) false advertising in violation of Section 43(a) of the Lanham Act, 15 U.S.C. §1125(a)(1)(B); (ii) infringement of U.S. Trademark Registration No. 5,688,539 (the “’539 Trademark”); (iii) infringement of U.S. Patent Registration No. 9,010,578 (the “’578 Patent”); (iv) false designations of origin in violation of 15 U.S.C. §1125(a); (v) unfair competition under 15 U.S.C. §1125; (vi) common-law trademark infringement; (vii) common-law unfair competition; (viii) deceptive trade practices in violation of N.Y. Gen. Bus. Law §349 and (ix) false advertising in violation of N.Y. Gen. Bus. Law §350. See Compl.,

106-183. On September 14, 2022, Xinial filed a petition for inter partes review of the ’578 Patent with the Patent Trial and Appeal Board (the “PTAB”). See Pl. Mot. at 1; Medmix Switzerland AG v. Xinial Systems GmbH & Co. KG, No. 24-CV-1516, DE [1-2] (“Notice of Appeal”), at 9 (Fed. Cir. Feb. 29, 2024). On May 4, 2023, each Defendant filed an Amended Answer to the Complaint (“Am. Answer”), asserting multiple affirmative defenses and counterclaims, including a defense and a counterclaim based on the assertion that the ’578 Patent is unenforceable due to inequitable conduct. See Kettenbach GmbH Am. Answer, DE [72], at

Medmix Switzerland AG v. Kettenbach GMBH & Co. KG

Patent Infringement Claim Is Denied Severance But Is Stayed Pending Inter Pares Review

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