We've discussed in the past how IPR stays are becoming increasingly common in the district. Judge Burke continued that trend last week in an order granting a stay pending IPR in what he termed a "tough call."
Defendants in Speyside Medical, LLC v. Medtronic CoreValve LLC, C.A. No. 20-361-LPS-CJB, D.I. 155 (D. Del. Sept. 30, 2021), filed IPR petitions against all 5 patents-in-suit, but the PTAB only instituted IPR's against 3 of the patents. Defendant then moved to stay the whole action and the plaintiff opposed. Both sides agreed that a partial stay was inefficient, and so Judge Burke treated the motion as an "all-or-nothing proposition."
Judge Burke began by noting that noting that the decision would be an easy one if the PTAB had instituted as to all of the patents-in-suit. Although this situation presented a closer call, given that the case would ultimately need to proceed as to at least 2 of the patents, Judge Burke granted the stay based largely on the similarity between the patents, stating:
there are enough potential simplification gains to warrant staying the case as to these patents as well. The '941 patent and the '040 patent are very closely related to the 118 patent. The patents all share a common specification and similar claim language, certain original claims of the '941 patent were rejected by the Examiner on nonstatutory double-patenting grounds over a claim of the 118 patent, and some of the prior art at issue with regard to the '118 patent IPR is also asserted in this case against the '941 and '040 patents. So, with regard to the three patents in IPR, the PTAB will likely be considering (and hearing argument from the parties about) a lot of the same claim language and overlapping prior art as the Court would be considering here as to the '941 and '040 patents. Although it will require some delay, it makes sense under the circumstances to have the PTAB's work be done first, and for the Court and the parties to benefit from that work in the District Court thereafter.
Going forward, it will be interesting to see how the Court will treat a request to stay when the patents are less similar—we'll keep you posted.