On Friday, Judge Andrews addressed what happens when an IPR results in just 4 valid claims—and 79 invalid ones:
ORAL ORDER: I read the letters about lifting the stay. . . . The parties agreed to a stay through PTAB resolution of the IPRs. (D.I. 66 ). The PTAB resolution determined seventy-nine claims unpatentable and four patentable. Both sides have appealed. It does not make much sense to go forward with the overwhelming number of asserted claims likely invalid. I think it is probable that there will be a final decision from the Court of Appeals within a reasonable amount of time. That decision will, one way or another, greatly simplify this case. The …
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Basic legal stuff.
As is often the case, these general principles can only be stretched so far. Such was the lesson of Monterey Res., LLC v. Nanya Tech. Corp., C.A. No. 19-2090-NIQ (D. Del. May 10, 2023) (Order), in which a motion to stay went just a bit too far.
Evident from the C.A. No., this case was pretty old, and had already been stayed once pending IPR's on 4 of the 6 patents-in-suit. A few of the IPRs succeeded but the case continued on the remaining patents this last January with some discovery taking place and Markman briefs being exchanged.
Pretty standard so far.
The twist is that the Defendant then requested EPRs for 2 of the 4 remaining patents and moved to stay the case again. This proved to be a bridge too far:
Here, this matter is in the middle stage of discovery, though the parties have also filed claim construction briefs. This matter, however, has been pending since November 4, 2019, and has already been stayed for more than 19 months to allow the IPR proceedings to play out. These circumstances do not favor a second stay.
Monterey Res., LLC v. Nanya Tech. Corp., C.A. No. 19-2090-NIQ (D. Del. May 10, 2023) (Order)
As a little aside, this order gave me a bit of nostalgia for my early days in Delaware. I used to see a great many orders where 80% of the text was in footnotes explaining the reasoning, but it seems to have fallen out of fashion in DE over the last couple years. I find that I miss it a bit.
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)). ...
Reader, I feel like we know each other, so I'm going to level with you. We are going to write a post about absolutely everything Judge Williams does for the next month or so.
New standing order? POST.
First trial? POST.
Pets a cute cat? 2 POSTS.
If you stop clicking? We'll just start juicing the headlines (Judge Williams DESTROYS cat!). This is the world we all live in now.
On a totally unrelated note, Judge Williams issued an opinion today continuing the trend of longer and longerIPR stays. The parties in Personal Genomics Taiwan, Inc. v. Pacific Biosciences of California, Inc., No. 19-1810-GBW-MPT, had initially stipulated to a stay pending an IPR. That stay expired in February when the case was still assigned to Judge Stark. Two weeks later the defendant moved to stay pending appeal of the IPR (which had been only partially successful). Briefing closed right around the time the case was transferred ...
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 …
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