A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: Stay

There go the patentee's chances to oppose a stay....
Saad Chaudhry, Unsplash

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 …

Stay!
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 ...

Today, we analyze the District of Delaware's propensity to grant stays pending IPR decisions, as compared to the Western District of Texas. Here are the big takeaways:

  • Prior to IPR institution, motions to stay are almost always denied in D. Del.;
  • Judge Albright of W.D. Tex. has denied 40% of motions (i.e. two motions) to stay pending instituted IPRs, but there is not much data available yet;
  • D. Del. has denied about 28% of motions (i.e. 16 out of 58) to stay pending instituted IPRs in the last four years;
  • D. Del. receives far more motions to stay pending IPR than W.D. Tex., and grants them just over half the time (~60% in the last 4 years, …

Stop Sign
Luke van Zyl, Unsplash

There are certain situations that come up over and over in patent cases. One of them is that a plaintiff will bring identical infringement suits against multiple defendants, and one of those defendants will then file an IPR or CBM proceeding before the patent office attacking the validity of the patents.

Under the America Invents Act, the filing party and any real party in interest are subject to estoppel. But unrelated defendants are not. The filing party will often move to stay the district court litigation. Generally speaking, parties with an instituted IPR or CBM review of all patents-in-suit often have pretty good chances of getting a stay.

So what happens when the defendants in …

A few days ago, Magistrate Judge Fallon denied a request to stay her discovery ruling pending the losing party's objections and review by the District Judge. Defendant SXM in Fraunhofer-Gesellschaft Zur Forderung der angewandten Forschung e.V. v. Sirius XM Radio Inc., C.A. No. 17-184-JFB-SRF asked Judge Fallon to follow the parties' "agreed-upon practice" to stay discovery rulings pending objections, a practice the parties had apparently followed in two prior instances.

Or not.
Or not. Erik McLean, Unsplash

On October 7, Judge Fallon ordered that the plaintiff's experts should have access to defendant SXM's confidential information. About a week later, the parties submitted a letter setting forth their respective positions on whether the discovery ruling should be stayed.

Judge Fallon declined to stay her ruling. She noted that...

This case is staying right where it is
This case is staying right where it is A funny thing you can have the chance to experience at the Elk Island National Park, Yann Allegre, Unsplash

We've discussed in the past how IPR stays are becoming increasingly common in the district. Judge Burke continued that trend last week in an order granting a stay pending IPR in what he termed a "tough call."

Defendants in Speyside Medical, LLC v. Medtronic CoreValve LLC, C.A. No. 20-361-LPS-CJB, D.I. 155 (D. Del. Sept. 30, 2021), filed IPR petitions against all 5 patents-in-suit, but the PTAB only instituted IPR's against 3 of the patents. Defendant then moved to stay the whole action and the plaintiff opposed. Both sides agreed that a partial stay was inefficient, and so Judge Burke treated the motion as an "all-or-nothing proposition."

Judge Burke began by noting that noting that the decision would be an easy one if the PTAB had instituted as to all of the patents-in-suit. Although this situation presented a closer call, given that the case would ultimately need to proceed as to at least 2 of the patents, Judge Burke granted the stay ...

A similar log jam
A similar log jam David Lindahl, Unsplash

There was an interesting discovery dispute order from Judge Burke yesterday. In Sysmex Corporation et al v. Beckman Coulter, Inc., C.A. No. 19-642-RGA-CJB (D. Del.) (a case we've previously discussed), due to COVID issues, defendant has been unable to depose the inventor—an employee of plaintiff—since the deposition was noticed over eight months ago.

Now, fact discovery is closed, summary judgment motions are due today, and the case is scheduled for trial in February 2022—but the plaintiff still hasn't provided the inventor for a deposition.

The defendant wisely moved to stay the case pending deposition of the inventor. In ruling on the motion, ...

ANDA litigation can be an odd beast. You file a case based on a product that a defendant has only applied to manufacture—what then, when the FDA requires an amendment? What of the litigation that may be years in the making and heading into the home stretch?

The somewhat tortured history of Biodelivery Sciences International, Inc. et al. v. Chemo Research, S.L., C.A. No. 19-444-CFC-CJB, gives us several examples of exactly how the Court deals with this situation.

An Early Change to an ANDA Does Not Warrant a New Trial Date

Early on in that case (about 6 months after the scheduling order was entered) one of the defendants—Chemo—received a complete response letter ("CRL") from the FDA requiring them …

In certain circumstances, a stay pending the resolution of an ITC Section 337 Investigation is automatic. But where the overlap in patents is not total, whether to stay proceedings on the non-overlapping patents is left to the discretion of the district court judge.

ITC
The USITC in Washington DC, Toytoy at the English Wikipedia, CC BY-SA 3.0 , via Wikimedia Commons, CC BY-SA 2.0

Judge Andrews recently exercised that discretion to deny a request to continue a stay for non-overlapping patents where one of twelve patents-in-suit was still pending at the ITC.

Initially, five of the twelve patents had been asserted at the ITC. Of those, three were involved in an appeal to the Federal Circuit, and just one was remanded to the ITC.

The defendant in Wirtgen America, Inc. v. Caterpillar, Inc., C.A. No. 17-770-RGA argued that all five overlapping patents were subject to a mandatory stay under 28 U.S.C. § 1659(a). ...

Judge Fallon today rejected a motion to stay in Minerva Surgical, Inc. v. Hologic, Inc., C.A. No. 18-217-JFB-SRF (D. Del.), where the defendants tried to rely on COVID-19 opinions as precedent to support a further stay of the August 2021 jury trial.

Not stopping
Jorgen Hendriksen, Unsplash

Defendants tried to argue that the current trial date is tentative and COVID-19 uncertainty supports a further stay:

Although discovery is complete, the trial date is merely tentative and “subject to courtroom availability and the priority of other trials previously scheduled ahead of it.” . . . Moreover, as the Court observed in American Axle, “the ongoing impact of the coronavirus pandemic would render it imprudent to set a trial date at this time.” 2021 WL 616992, at *2; Brit. Telecomms. PLC v. IAC/InterActiveCorp, C.A. No. 18-366-WCB, 2020 WL 5517283, at *5 (D. Del. Sept. 11, 2020) (“[I]n light of the COVID-19 pandemic, it seems highly unlikely that the present schedule will hold. . . . And once trials resume, the district court will be faced with the challenge of dealing with the backlog of civil cases that has built up . . . .”); Order at 3, Pact XPP Schweiz AG v. Intel Corp., C.A. No. 19-1006-JDW, D.I. 277 (D. Del. Nov. 5, 2020) (Ex. 1) (“The Court is also mindful of challenges it and the Parties face due to Covid-19 and corresponding restrictions. If this case were to proceed on its current schedule, the trial would likely be subject to significant delays.”).

Magistrate Judge Fallon rejected this argument outright:

Pursuant to the court's April 5, 2021 Notice, the suspension of civil jury trials has expired ...