Motions to stay are common as dirt, and about as interesting.
The factors are exactly what you expect them to be, and the Court has broad discretion to apply them. Most of these motions could be reduced to a checklist:
Where IPRs are concerned, post-institution stays are fairly routine. But there are also instances where cases are not stayed, and it can lead to surprising results. For example, we talked last year about a case where where a defendant won on invalidity in an IPR, but had to proceed to trial anyway—and faced estoppel on their prior art.
We saw an order in a somewhat similar category this week, when Judge Williams denied a post-trial motion to stay following the invalidation of the asserted claims by the PTO in an ex parte reexamination:
ORAL ORDER: Having reviewed the Joint Status Report, D.I. 1856, filed by the parties on October 23, 2023, the Court …
I'm not sure if "Ddrops" stands for "dew drops." But this is a nice picture regardless.Aaron Burden, Unsplash
We've talked about how pre-institution stays can be tough (but not impossible) to achieve, and about how Judge Burke has sometimes responded to a pre-institution motion to stay by asking for a status report and abbreviated briefing after the institution decision:
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.
eBuddy Technologies B.V. v. LinkedIn Corporation, C.A. No. 20-1501-RGA-CJB, D.I. 108 (D. Del. Mar. 4, 2022) (Burke, J.).
Last week, Judge Williams adopted a similar view, denying a pre-institution motion to stay but offering to revisit the issue after the institution decision—and to take the previous briefing into account:
ORAL ORDER: Having reviewed Defendant MOM Enterprises, LLC's ("MOM") Motion to Stay Pending Inter Partes Review ("IPR") . . . , IT IS HEREBY ORDERED that the Motion is DENIED WITHOUT PREJUDICE to renew the request if the IPR is instituted. A court has discretionary authority to grant a motion to stay. . . . Because no institution decision has yet been issued, the Court will decline to stay the case until it hears from the PTAB. . . . By no later than five (5) business days after the PTAB issues its institution decision as to the IPR petition relating to the asserted patent, the parties shall file a joint letter updating the Court on the results of the PTAB's decision. If the PTAB grants the IPR petition, and if MOM then wishes to renew its Motion, MOM should include in the joint letter a statement that it intends to renew its Motion. The Court will then set a letter briefing schedule on the renewed Motion. When reviewing the renewed Motion, the Court will take into account the briefs already filed as to the instant Motion. ORDERED by Judge Gregory B. Williams on 8/25/2023.
Ddrops Company v. MOM Enterprises, LLC, C.A. No. 22-332-GBW, D.I. 108 (D. Del. Aug. 25, 2023). This mirrors Judge Burke's previous order, although Judge Williams' order doesn't state whether the later briefing will be truncated—that may depend on the circumstances.
Judge Williams' practice is useful to know because, obviously, it affects the calculus of whether it is worthwhile to bring a pre-institution stay motion at all.
We wrote last week about how Judge Andrews—somewhat surprisingly—declined to lift a stay after the PTAB left just 4 of 83 patents standing, and invalidated the rest.
After that decision, the parties filed a series of letters that clarified that the plaintiff had intended to proceed only on the four valid patents, not the rest, but wanted to check with the Court regarding how they should proceed:
[Plaintiff] Cytiva understood that the litigation would proceed only with regard to the four claims that the PTAB upheld as valid, and until JSR’s submission, was not aware that JSR had a contrary view. Cytiva had no intention, and has no intention, …
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 …
The defendants in Corteva Agriscience LLC v. Monsanto Company, C.A. No. 22-1046-GBW (D. Del. Apr. 27, 2023) moved to stay after a third party initiated an ex parte reexamination of the patents-in-suit.
To meet the "simplification" factor in moving to stay, defendants offered to drop their obviousness-type double patenting defense:
The first factor—whether granting the stay will simplify the issues for trial—disfavors a stay. Defendants assert a stay would simplify the case. First, Bayer claims it will agree to not argue that the '555 Patent is invalid for obvious-type double patenting ("OTDP") on the basis of U.S. Patent No. 11,149,283 ("the '238 patent" ) and that dropping this argument will simplify the issues for trial. D.I. 41 at 9.
The Court quickly dispatched with that idea, noting that it was essentially a throw-away argument:
However, Defendants recognize that Corteva can overcome the OTDP argument if Corteva files a terminal disclaimer. 3 Id. at 9-10. Because it is likely that this OTDP argument will not make it to trial anyway, the Court does not find that Bayer's offer to drop the argument will simplify the case.
The Court found that the factors did not favor a stay, especially considering the plaintiff had added two additional patents in the time since defendants filed their motion, and those two patents are not subject to re-examination. Beyond that, a stay would likely preclude injunctive relief (due to a patent expiration).
All told, it's not clear how they could have prevailed on this motion at all after the plaintiff asserted the two additional patents.
As a peak behind the curtain, I don't normally tell muggles (non-patent folk) that I write a blog. I can't help but put myself in their shoes and imagine myself at a party talking to a man in a polo shirt who writes a blog about . . . cured meats? I see myself pressed firmly against a wall while my eyes dart madly for help that I know will not come. On his shirt - pastrami.
You see, it's in the temperature of the cure—too long, and you've lost yourself a brisketAI-Generated, displayed with permission
I don't want to be that man.
But today my wife told me that she's started reading the blog. Her favorite is the one with the crab. I am ever so pleased and am inspired to maintain the commitment to the craft of blogging which has made IP/DE the bulwark of modern culture it is.
[Insert seamless transition to legal analysis here, then remember to delete this before posting]
This brings us to a novel argument to (essentially) stay 101 briefing, which Judge Williams soundly rejected yesterday. The defendant in SurgeTech, LLC v. Uber Techs. Inc., C.A. No. 22-882-GBW (D. Del. Apr. 17, 2023) (Oral Order), moved for judgment on the pleadings on 101 grounds a bit later than usual -- just after the submission of the joint claim construction chart.
The plaintiff then moved for a 5 week extension of its deadline to respond, ...
It's fairly common for a patentee to bring suit simultaneously against both a customer who is using or reselling an infringing product and the manufacturer who produced the product.
Sometimes the customer is the real target, and sometimes it's the manufacturer. Either way, some courts have recognized a "customer suit exception" that suggests that, under some circumstances, suits against a manufacturer should take precedence over a suit against a customer.
As courts sometimes point out, the customer suit "exception" began as an exception to the first filed rule in patent cases. But courts can also apply the principle more broadly, including to motions to stay.
For example, last week Judge Williams addressed a motion to stay …
AI-Generated, displayed with permission, displayed with permission
A while back we did a post speculating that requesting argument on a motion moderately increased the chances of the Court actually holding argument on an issue.
We also speculated about several other effects of requesting argument, but I'll save those for another slow news day. I apologize for nothing.
Stone Cold Facts
To test out this theory, I picked a motion that I pegged at about a 50/50 chance of having an argument -- a motion to stay. Taking all of the decisions deciding such motions since the first of the year (and removing some in odd procedural circumstances as well as filtering out identical motions in related cases to clean up …
I really hope this case lasts long enough for us to go through all the titles. I think We have a good shot at "Nemesis," but probably won't make it to "the Search for Spock"NASA, Unsplash
More than a year ago, we chronicled the rare tale of a stay that lasted all the way through an appeal to the Supreme Court. Thinking a stay could not possibly last any longer that that, we titled that post "The Final Frontier for Stays."
It turns out that we were right!
But only barely!
The Original Series
When last we saw our embattled litigants in Hologic, Inc. et al. v. Minerva Surgical, Inc., C.A. No. 20-295-SRF, the Federal …
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