In a recent Memorandum Order, Chief Judge Leonard P. Stark denied defendants’ (the “Moving Defendants”) motion to stay the litigation pending inter partes review (“IPR) of U.S. Patent No. 8,466,795 without prejudice. Pragmatus Mobile, LLC v. Amazon.com, Inc., C.A. Nos. 14-436, 14-440-LPS (D. Del. June 17, 2015). Judge Stark noted that “[t]he PTAB has not instituted the IPR petition” but “[g]iven the filing date, the PTAB is statutorily required to decide whether to institute the IPR petition by October 22, 2015.” Id. at 2.
Applying the first of three traditional factors the court considers when deciding whether to stay litigation pending IPR, Judge Stark found that “Moving Defendants’ delay in petitioning for IPR could create at least some tactical disadvantage for Plaintiff Pragmatus Mobile, LLC (‘Plaintiff’) and a stay may unduly prejudice Plaintiff.” Id. More specifically, Judge Stark observed that “[w]hile Plaintiff’s status as a nonpracticing entity reduces the prejudice it would suffer from a stay . . . , there remains a potential for undue prejudice.” Id. Moreover, Judge Stark found that “the timing of Moving Defendants’ filing suggests they may be seeking a tactical advantage, given they were aware of the prior art asserted in their IPR petition many months before filing the petition just three days before the statutory deadline.” Id.
Judge Stark also found the second traditional factor (whether stay would simplify the issues in question and trial in the case) to disfavor stay at the time of deciding the motion. Judge Stark explained that “[g]enerally, the ‘simplification’ issue does not cut in favor of granting a stay prior to the time the PTAB decides whether to grant the petition for inter partes review.” Id. 2-3. Judge Stark noted, however, that “Moving Defendants may renew their Motion if and when their petition is instituted, and the simplification factor may be evaluated differently at that time.” Id. at 3.
Judge Stark finally found the third factor (whether discovery is complete and whether a trial date has been set) to weigh against granting stay. Judge Stark observed that “a trial date has been set for September 12, 2016 (around the same time as the IPR petition may be finally decided) and the parties have substantially completed document production, exchanged invalidity and infringement contentions, and commenced claim construction briefing in preparation for a Markman hearing scheduled for August.” Id. Judge Stark further noted that “[f]inal infringement contentions are due in late October, shortly after the PTAB’s deadline for deciding whether to institute the petition.” Id.