In a recent Memorandum Order, Magistrate Judge Christopher J. Burke denied plaintiff’s motion to lift the stay pending inter partes review (“IPR”) in two related actions. Princeton Digital Image Corp. v. Konami Digital Entertainment Inc., C.A. Nos. 12-1461, 13-335-LPS-CJB (D. Del. Jan. 14, 2015). Defendants had filed two petitions for IPR of the patent-in-suit, U.S. Patent No. 5,513,129 (“the ‘129 patent”), and the PTAB granted each petition in part. Id. at 2-3. As Judge Burke explained, only “three claims from the ‘129 Patent’s 23 claims are not currently under review in [the] two IPR proceedings: claims 14, 19, and 20.” Id. Each of those three claims are dependent claims, depending from two independent claims under review. Plaintiff thus requested that the Court lift the stay “at least with respect to claims 14, 19, and 20.” Id. at 3.
Judge Burke found, however, that “were Plaintiff’s request to lift the stay granted-either as to claims 14, 19 and 20, or as to all claims-that could significantly complicate the issues in these actions and lead to inefficiency.” Id. at 4. Judge Burke further explained that “the ongoing IPR proceedings could simplify issues at play in this case-even as to the few dependent claims (claims 14, 19 and 20) that the PTAB does not currently have under review.” Id. at 5. Lastly, Judge Burke noted that as of the current date, “all but three of the [the ‘129 patent’s] claims are under review,” which was less than the six claims not under review at the time the court initially granted stay. Id. at 6. Judge Burke therefore concluded that “any changed circumstances since the date of the Court’s Order on the stay motions do not favor Plaintiff’s position” regarding simplification of the issues, and “[i]f anything, . . . the rationale for a stay [with respect to simplification] is stronger now as compared to when the Court initially granted the stay.” Id.
Turning to plaintiff’s argument regarding undue prejudice, Judge Burke explained that since the Court’s original order granting stay, “the most significant changed circumstance is the fact that the PTAB has initiated its review” in response to a second IPR petition. Id. at 7. Judge Burke found that “[t]he additional delay likely associated with that proceeding will mean that relevant PTAB proceedings will remain ongoing longer than was expected at the time of the Court’s prior Order,” but also explained that “[t]he mere potential for delay . . . is insufficient to establish undue prejudice.” Id. at 7-8. Judge Burke further noted that the “other relevant subfactors” related to undue prejudice (the timing of the request for review, the timing of the request for a stay, and the relationship of the parties) favored stay. Id. at 8. On balance, Judge Burke found the “undue prejudice” factor to be neutral. Id. at 8.
Considering the factors discussed, Judge Burke concluded that “overall, the calculus still supports a stay.” Id. at 8.