Motions to stay pending IPR's have gone through several trends as the IPR landscape has shifted in the years since the AIA created the procedure. In the halcyon days of 2013-2014 when the PTAB was instituting 80+% of all IPR petitions, it was fairly common in Delaware to see stays granted pre-institution. See, e.g., Peschke Map Techs. v. JJ Gumberg Co., C.A. No. 12-1525-SLR (D. Del. Apr. 24, 2014); Princeton Digital Image Corp. v. Konami Digital Entertainment Inc. et al., C.A. No. 12-1461-LPS-CJB (D. Del. Jan. 15, 2014) (mem. order).
Stay Rates Decline in the late 2010's
In the years since, as institution rates declined, stays pending institution decisions have become all but unheard of, and the rates of grant had generally declined alongside them. In 2017, for instance, DocketNavigator reports 33 separate decided motions to stay pending IPR. of those:
- 20 (61%) were granted
- 11 (33%) were denied (4 because the stay was requested prior to institution)
- 2 (6% )were partially granted
Recent Uptick in Stay Grant Rate
A 61% grant rate on a motion, is solidly in the "pretty good" range, but not exactly a sure thing. So I was personally surprised to read Judge Andrews' opinion on Tuesday in Wilson Wolf Manufacturing Corporation v. Brammer Bio, LLC, C.A. No. 19-2315-RGA, D.I. 22 (D. Del. Dec. 8, 2020). The ruling itself was not surprising (granting a stay in favor of an action in a different district), but Judge Andrews stated in a footnote that "it has become fairly routine to stay cases after IPRs have been instituted." Id. at 4 n.7. Looking into the stay motions decided so far this year, Judge Andrews's assessment seems spot-on. So far this year DocketNavigator shows 53 separate decisions on motions to stay pending IPR. Of those:
- 40 (75%) were granted
- 9 (17%) were denied (7 because the stay was requested prior to institution)
- 4 (8%) were partially granted
Discounting the stays denied because the request was made prior to institution, a whopping 87% of motions to stay were granted outright this year!
It's tough to say as yet what might be driving this trend, but its worth noting that a motion that was little better than a coin-flip 3 years ago has become a pretty good bet in the last year.
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