A Blog About Intellectual Property Litigation and the District of Delaware


There go the patentee's chances to oppose a stay....
Saad Chaudhry, Unsplash

In an oral order today, Judge Fallon stayed an action where there was an IPR on just one of two asserted patents:

ORAL ORDER: Having reviewed Defendant's letter motion to stay the case pending issuance of the PTAB's final written decision in the IPR proceedings . . . IT IS HEREBY ORDERED that: (1) Defendant's motion to stay is GRANTED because Defendant has satisfied the three stay factors. See IOENGINE, LLC v. PayPal Holdings, Inc., C.A. No. 18-452-WCB et al., 2019 WL 3943058, at *2 (D. Del. Aug. 21, 2019). First, the stay will simplify the issues for trial because the PTAB's final written decision is likely to resolve prior art-based invalidity arguments on one of the two patents-in-suit. Plaintiff's position that the issues will not be simplified because the remaining patent-in-suit is not subject to IPR proceedings has been frequently rejected by courts. See id. at *8-10 (citing cases); see also SITO Mobile R&D IP, LLC v. World Wrestling Entmt, Inc., C.A. No. 21-721-CFC, 2021 WL 7628181, at *1 (D. Del. Dec. 20, 2021) (granting stay where only seven of twelve patents-in-suit were before the PTAB). Tellingly, Plaintiff has not provided any case authority supporting its position on this issue.

Plaintiff appears to have partially sank its own ship by its statements on the record—although the fact that a related case was also stayed didn't help either:

Moreover, Plaintiff has represented on the record that the patent-in-suit which is not before the PTAB "rises and falls" with the patent-in-suit subject to the IPR proceedings. . . . Second, a stay will keep this case on track with related Civil Action No. 20-1339-MN, which was subject to the same scheduling order applicable to this case and was recently stayed pending resolution of the IPR proceedings. (D.I. 46; C.A. No. 20-1339-MN, D.I. 114)

The Court held that a coming claim construction deadline weighed in favor of a stay, rather than against one:

Plaintiff emphasizes the approaching claim construction deadlines, but going forward with claim construction on patent claims that could be invalidated in the IPR proceedings would be a waste of party and court resources.

As to whether plaintiff would be unduly prejudiced, the Court found that plaintiff's prior agreement to a stay in other cases showed that staying this case would not prejudice plaintiff:

Third, Plaintiff will not suffer undue prejudice from the delay, and Defendant will not gain a clear tactical advantage as a result of the stay. Plaintiff refers broadly to its interest in the prompt enforcement of its patent rights. (D.I. 75 at 4) However, Plaintiff's position in opposition to a stay in the instant case is at odds with its position in the two other cases in which it has asserted claims based on the patent subject to the IPR. The record shows that Plaintiff agreed to stay related Civil Action No. 20-1339-MN and affirmatively moved to stay an action involving the patent-in-suit pending in the Western District of Texas.

Kajeet, Inc. v. Gryphon Online Safety, Inc., C.A. No. 19-2370-MN (D. Del. June 10, 2022).

Under this decision, by consenting to a stay pending IPR in one action, plaintiffs may be hurting their chances of a stay in any related actions. Buyer beware.

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