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Stay! Taylor Kopel, Unsplash

Pre-institution stays can be tough to achieve, but they are sometimes granted. Even when denied, though, a pre-institution stay may have other benefits, including that the Court may be willing to offer guidance on what to do—and what may happen—if the IPR is instituted.

An order from Magistrate Judge Burke on Friday is a good example. In eBuddy Technologies B.V. v. LinkedIn Corporation, C.A. No. 20-1501-RGA-CJB (D. Del.), the defendant moved for a pre-institution stay pending IPR. Judge Buke denied it:

ORAL ORDER: The Court, having reviewed Defendant's motion to stay the case pending resolution of [un-instituted] inter partes review ("IPR") proceedings . . . , hereby ORDERS that the Motion is DENIED without prejudice to renew in light of the following: (1) For reasons it has previously expressed, the Court is not typically inclined to grant a stay in favor of IPR proceedings when a case has been moving forward for a while and when the PTAB has not yet determined whether to initiate review of any of the patents-in-suit. . . . .; (2) That outcome seems particularly appropriate here, as while the case is surely not in its later stages, nevertheless: (a) the parties and the Court have already engaged in a fair amount of work on it (including due to the time-intensive Section 101 motion-to-dismiss process); (b) the parties and the Court are in the midst of preparing for a Markman hearing; and (c) the parties are in the later stages of the discovery period, and have already gone back and forth quite a bit regarding disputes over deposition scheduling or e-discovery production. . . . ; (3) With regard to Defendant's argument that "[i]f this Court defers ruling on the stay until May or July, the parties and the Court will have to proceed through several labor-intensive stages of litigation" (i.e. the Markman hearing and certain depositions), . . . the fact that this Motion is being decided at this particular stage of the case is not Plaintiff's fault or the Court's fault; it is a function of when Defendant chose to file its IPR petitions (and its subsequent Motion). So the Court does not see how this reality should be held against Plaintiff or militate in favor of a stay now.;

But the Court made clear that if the IPR is instituted, defendant can renew its motion to stay on an abbreviated briefing schedule:

Therefore, no later than five business days after the PTAB rules on whether it will institute IPR as to the last of the petitions at issue, the parties shall provide the Court with a status report of no more than two single-spaced pages, indicating the outcome of the petitions and whether Defendant wishes to renew its Motion. If Defendant does wish to renew the Motion then, the Court will set a further (truncated) briefing schedule.

Beyond that, the Court did something that I haven't seen before—it offered guidance to the PTAB as to how the Court is likely to treat the case if the PTAB institutes the IPRs, or some portion of them:

As for Defendant's argument that "if the Court does not stay this case, the PTAB may deny institution of" Defendant's four IPR petitions (in light of the Fintiv factors), (D.I. 81 at 15), the Court holds no brief for Defendant, and so it has no view as to whether the PTAB should or should not deny institution of the IPRs. That said, to the extent it is helpful for the PTAB's institution analysis, the Court can say that: (a) if all four petitions are instituted, Defendant will have a good chance of then obtaining a stay of the case (though the Court would still give Plaintiff an opportunity to argue why a stay is not warranted); (b) if all four petitions are denied, obviously no stay will be sought or granted; and (c) if some petitions are granted and some are denied, it is difficult to predict what will happen in terms of a subsequent stay request.;

The Court's analysis is consistent with other cases I've seen. If IPRs are instituted on all claims, the Court will typically stay the case (as such, patentees are often willing to stipulated to a stay). With a partial institution, the results vary.

I imagine the defendant here probably knew going into the motion that achieving a stay would be tough, but now they will be well-positioned to move quickly if the IPR is instituted. The Court's comments may also make it easier to for the parties to agree to a stipulated post-institution stay, avoiding further motion practice altogether.

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