In Softview LLC v. Apple Inc., et al., C.A. Nos. 12-989-LPS & 10-389-LPS (Cons.) (D. Del. Sept. 4, 2013), Judge Leonard P. Stark has ordered a stay, pending inter partes review, until March 31, 2014. While the Court had previously denied defendants’ motion to stay in July 2012, it concluded that circumstances had changed such that a stay was now warranted.
As to prejudice to the plaintiff, while the Court “continue[d] to have . . . concerns” regarding prejudice and the potential tactical advantage for defendants, “subsequent case developments make them less of a problem. In particular, fact discovery is now complete, at least somewhat mitigating the risk of evidentiary staleness. Also, given that [plaintiff] is a non-practicing entity and not seeking injunctive relief, the limited delay . . . should not severely prejudice [plaintiff].” Id. at 2-3.
A stay pending inter partes review would also likely simplify issues for trial. Whereas at the time of the previous request for a stay only some of the asserted claims stood rejected, now the PTAB had granted inter partes review with respect to all asserted claims. Id. at 3.
Finally, while the early stage of the case and the “lengthy process of reexamination” had been factors in the Court’s 2012 denial of a stay, the case had since moved forward “substantially” (the Court, for example, issued a claim construction opinion on the same day as this Order) and “the inter partes review promises to be a more expeditious process than reexamaination and appears to be relatively close to completion.” Id. at 3. Absent a stay, the parties were scheduled to complete expert discovery and file case-dispositive motions by the end of March 2014, but the PTAB was required to issue a final determination by that time unless there was an extension for good cause. Id. at 4. “[U]nder the circumstances, [the Court believed that] it is appropriate to allow the inter partes review a reasonable period to conclude before launching the parties into the expense of expert discovery.” Id.
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