A Blog About Intellectual Property Litigation and the District of Delaware

While pre-institution stays pending IPR are usually seen as disfavored in this District, they are occasionally granted. The circumstances must be right, however.

Judge Connolly recently ordered a stay in Allergan USA, Inc. v. Prollenium US Inc., C.A. No. 20-0104-CFC pending IPRs that had been filed—but not instituted—on all asserted claims.

He noted that a related action had already been stayed pending IPR, and that the defendants had agreed "to forgo their inequitable conduct counterclaims and defenses in both actions," and found good cause to stay. As a condition of the stay, he required that defendants dismiss their inequitable conduct defenses and counterclaims, and ordered that they would be "barred" from pursuing those defenses in both actions.

This decision demonstrates that pre-institution motions to stay are not always losers.

The motion in the Allergan case was supported by the existing stay in the related action and defendants' willingness to give up what can be a very fact-intensive and time-consuming defense of inequitable conduct.

Defendants should consider using substantive waivers to get themselves over the procedural threshold like the defendants in the Allergan case. This tactic has also been somewhat successful, if not outright required, in seeking early summary judgment or other types of stays (e.g., customer suit exception stays).

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