We've had quite a few posts in recent months about the trend towards granting longer and longer stays in the district, so it was interesting to see a decision bucking that trend on Monday.
The Court stayed the proceedings in Speyside Medical, LLC v. Medtronic CoreValve LLC, C.A. No. 20-361 (D. Del. Oct. 14, 2022) (Oral Order) last year after the PTAB instituted an IPR on 3 of the 5 patents in suit. The final written decision issued last month, with about half of the asserted claims from those 3 patents invalidated, and the other half upheld. The parties joint status report hinted heavily that appeals could be expected from both sides
In the parties' status report, the plaintiff pressed to move forward with the case, agreeing not to pursue the currently invalidated claims. Defendant, unsurprisingly, wanted to continue the stay, and chastised the plaintiff for refusing to drop those claims with prejudice, and thus leaving the door open to their potential return at a less opportune time.
Judge Burke decided to get things moving, referring to the "typical practice of our Court":
The Court ORDERS that the stay is lifted and that the case will proceed forward pending any appeal of the IPR decisions, in light of the fact that: (1) the original decision to stay the case was itself a close call, (D.I. 155 ); (2) Plaintiff has (at least for now) agreed not to pursue in this Court any of the claims of the '897 and '708 patents that the PTAB has held unpatentable; (3) Defendants have had a fair shot in the PTAB to invalidate the remaining asserted claims of the '118 and '897 patents and have not prevailed; and (4) moving forward in these circumstances is in line with the typical practice of our Court, (D.I. 162 at 1-2 (citing cases)). In the perhaps unlikely event that the claims of the '897 and '708 patents that the PTAB has held unpatentable are revived on appeal and Plaintiff then seeks to re-add those claims to this case, (id.), the Court will do its best to make sure that Defendants are not prejudiced with regard to case scheduling matters.
It will be interesting to see if decisions on stays will trend shorter (i.e., excluding appeals) in the future now that the Court is back to its full complement, or if this case will remain limited to its own unique facts.
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