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Judge Robinson stays patent misuse and antitrust counterclaims in part, bifurcates remainder.

Judge Sue L. Robinson recently ruled on a motion to stay with respect to defendants’ patent misuse and antitrust counterclaims.  Intellectual Ventures I LLC v. Toshiba Corporation, et al., Civ. A. No. 13-453-SLR (D. Del. Mar. 20, 2015).  Judge Robinson explained that, in most cases, “patent misuse defenses and antitrust counterclaims are related to, and co-extensive with, the scope of the patent litigation in whcih they are asserted.”  Id. at 3.  In such cases, it makes sense “to stay consideration of such defenses and counterclaims, as they are based in large measure on the efficacy of the patent litigation itself . . . .”  Id.  The defendants argued that their counterclaims were different than the typical case, because the patent misuse and antitrust counterclaims were not focused simply on the asserted patents, but instead on the plaintiff’s “3,700+” patent portfolio.  Id.  Judge Robinson agreed to a point, and ordered that the counterclaims were stayed to the extent they involve validity of the plaintiff’s patent portfolio.  But to the extent the antitrust counterclaims related to “numerosity and value (i.e., presuming validity) of [the plaintiff’s] patent portfolio and [the plaintiff’s] allegedly improper leveraging of such, I agree that a stay is not warranted, as there are no overlapping issues with [the plaintiff’s] case.”  Id. at 4.  Judge Robinson ruled that such counterclaims could proceed, but on a bifurcated schedule.

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