Chief Judge Stark recently denied a motion to stay patent litigation while the defendant pursues an appeal of the PTAB’s decision not to institute inter partes review of the sole asserted claim of the patent-in-suit. Of the factors typically considered in the stay analysis, Judge Stark found that each weighed against a stay. Greatbatch Ltd. v. AVX Corp., et al., C.A. No. 13-723-LPS, Memo. Or. at 1 (D. Del. Dec. 10, 2015).
First, “the Court note[d] that Defendants filed their petition for IPR on the last day permitted by statute. Moreover, Defendants delayed moving for a stay until after completion of discovery, after completion of the parties’ briefing for summary judgment and Daubert motions, almost a year after the PT AB instituted IPR, and less than two months before the pre-trial conference. While delay, by itself, is insufficient to find undue prejudice, here Defendants’ delay in combination with the parties’ status as competitors (or potential competitors) persuade that Court that this first factor weighs against a stay.” Id. at 2.
Second, “the IPR was not instituted as to claim 12, and the PTAB’s final written decision did not directly address claim 12. Any appeal from the PTAB’s decision will also not directly address claim 12. . . . Because the Court already has the benefit of the PT AB’ s final written decision, and because any forthcoming insight regarding the validity of claim 12 from the Federal Circuit or reissue proceedings is wholly speculative at this point, the Court determines that this factor weighs against a stay.” Id. at 3.
Finally, “the Court notes that discovery is complete, the Court has construed the disputed claim terms and ruled on the parties’ multitude of motions, the pretrial conference is less than two weeks away, and a jury trial (which has been on the schedule since April 2014) begins in a month (January 11, 2016).” Id. Moreover, “[t]he discovery process involved at least five discovery teleconferences, an indication of the vast amount of party and judicial resources that have been expended on this litigation, factors that in the overall balancing here – favor staying on course and proceeding to trial on all of the remaining patents-in-suit.” Id. at 3 n.3.