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Judge Sleet grants motion to stay pending inter partes review

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In a recent order, Chief Judge Gregory M. Sleet granted defendant’s (“Level 3”) motion to stay pending the inter partes review (“IPR”) of U.S. Patent No. 7,724,879. AIP Acquisition LLC v. Level 3 Communications, LLC, C.A. No. 12-617-GMS, Order (D. Del. Jan. 9, 2014). Plaintiff (“AIP”) is also pursuing related actions against at least 5 other defendants (“Cable Defendants”) in the District of Delaware. See C.A. Nos. 12-1688; 12-1689; 12-1690; 12-1691; 12-1692-GMS. At the time of the memorandum order, AIP was asserting against Level 3 U.S. Patents Nos. 6,757,275; 7,486,662; and 7,724,879 (“the ‘879 Patent”). Order at 1 n.1. Further, against all but one Cable Defendant, AIP asserted two additional patents, U.S. Patent Nos. 6,496,579 and 6,078,654. Order at 1 n.2 The Cable Defendants did not join Level 3’s IPR, but did not oppose a stay of their cases or the Level 3 case. Id. at 4 n.3.

Judge Sleet concluded that a stay would “simplify the issues before the court and conserve judicial resources.” Id. at 4. As Judge Sleet explained, in the PTO’s decision granting Level 3’s IPR petition, the PTO found that Level 3 “demonstrate[d] a reasonable likelihood of prevailing on its challenge to patentability of [all claims] of the ’879 patent.” Id. at 5. Judge Sleet thus concluded that granting stay would allow “the court and the parties to avoid wasting resources on a Markman hearing and at trial to address claims that have a ‘reasonable likelihood’ of being amended or canceled.” Id. at 5. Judge Sleet also noted, among other things, that while AIP was asserting against Level 3 two patents other than the ‘879 patent, the parties determined that only the ‘879 patent required claim construction. Id. at 6. Judge Sleet additionally found a stay would simplify the issues for trial because Level 3 would be “estopped from asserting invalidity arguments that were raised or reasonably could have been raised during the IPR proceeding,” and the Cable Defendants, although not parties to the IPR, had stipulated to be estopped from raising certain arguments based on the IPR proceedings. Id. at 5.

Judge Sleet found that the remaining stay factors did not “alter the balancing analysis,” and ultimately concluded that stay would “simplify issues before the court and [would] not unduly prejudice AIP.” Id. at 4, 6. Judge Sleet granted Level 3’s motion to stay and also stayed each of the related Cable Defendant cases.

AIP Acquisition LLC v. Level 3 Communications, LLC, C.A. No. 12-617-GMS(D. Del. Jan. 9, 2014)

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