In Sunpower Corporation v. Panelclaw, Inc., C.A. No. 12-1633-GMS (D. Del. May 16, 2014), Chief Judge Gregory M. Sleet granted defendant’s motion to stay pending inter partes review (“IPR”). Finding that plaintiff would not be unduly prejudiced by a stay, Judge Sleet first explained that any delay in defendant’s IPR filing was not due to defendant’s dilatory intent, but rather the result of plaintiff’s “own delay and settlement discussions.” Id. at 1-2. Specifically, Judge Sleet noted that while defendant had requested from plaintiff what claims it intended to assert via e-mail, plaintiff did not disclose that information until more than five months later with the service of its claim charts. Id. at 2. Judge Sleet further noted that defendant had filed its motion to stay two weeks after its IPR petitions. Id. at 3. Judge Sleet also found that the early stage of the IPR did not necessarily “counsel against granting stay, . . . . since any stay would be lifted by August 2014 if [defendant’s] IPR petitions are not granted.” Id. Notably, Judge Sleet found that the parties are not direct competitors. Id.
Judge Sleet found that the IPR process would likely simplify the issues before the Court. Even though the issues presented in the IPR did not completely overlap with those in the litigation, the case could be “much simplified or ended altogether” if claims were canceled. Id. at 4. Judge Sleet also pointed to the fact that if the claims were amended through the IPR, it would be “preferable to know what those amendments are prior to devoting substantial time and effort to claim construction, summary judgment motions, expert reports, and trial.” Id. at 4. Judge Sleet also noted that the Court could still benefit from the PTAB’s expertise in the event the claims survived the IPR, and that the IPR’s estoppel effect could further simplify matters for the Court. Id. at 4.
Judge Sleet found that the early stage of the litigation also favored stay, noting that there is “no case scheduling order, document production has yet to occur, and no trial date has been set.” Id. at 5.