Chief Judge Sleet denies motion to stay pending inter partes review.
Chief Judge Gregory M. Sleet recently denied a defendant’s motion to stay litigation pending inter partes review by the PTO. Davol, Inc. v. Atrium Medical Corp., C.A. No. 12-958-GMS (D. Del. June 17, 2013). The Court found that two of the three stay considerations weighed in favor of granting the motion (issue simplification and stage of litigation). Id. at 9-11. The Court denied the motion to stay, though, finding that the risk of undue prejudice to the plaintiff resulting from a stay outweighed the potential benefits inter partes review could have on the litigation in terms of simplifying the case. Id. at 11-12. As the Court explained, “the PTO proceedings are in their earliest stage and could be expected to last for nearly two years[,]” resulting in a delay in litigation that “risks unnecessarily impairing [plaintiff’s] patent rights[.]” Id. at 4-5. The Court was especially concerned about potential prejudice to the plaintiff given that the parties were direct competitors in a “relatively exclusive market”. Id. at 6. The Court rejected the defendant’s argument that any concern about the competitive position of the plaintiff should be reduced as a result of the plaintiff’s willingness to license its patented technology, explaining that “while eventual money damages might be sufficient to compensate [plaintiff] for lost sales, the prospect of lost market share and price erosion injects an added measure of uncertainty into this action.” Id. at 7.