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Magistrate Judge Burke denies without prejudice a motion to stay pending IPR

Magistrate Judge Christopher J. Burke recently denied without prejudice a motion to stay pending the PTAB’s resolution of petitions for inter partes review in Toshiba Samsung Storage Technology Korea Corp. v. LG Electronics, Inc., et al., C.A. No. 15-691-LPS-CJB (D. Del. Dec. 3, 2015).  The Court explained that the PTAB decision is expected to issue in early February, and (as of the date of this decision) a scheduling order in the case had not been entered.  As a result, Judge Burke found that the amount of initial discovery disclosures and other case activity likely to occur before the PTAB’s decision was not significant enough to unduly prejudice the defendants.  Judge Burke also found that allowing the case to proceed would allow for a more fully developed record for the Court’s consideration of a motion to stay in the event that the PTAB granted the IPR petitions.  The plaintiff had also “repeatedly stated that it anticipates asserting [in this case] claims of [its] Patents-in-Suit that are not covered by LG’s IPR petitions,” and Judge Burke explained that these claims not potentially subject to IPR “could have an impact on the ‘simplification’ analysis.”  Finally, Judge Burke’s decision took into account Chief Judge Stark’s Revised Procedures for Managing Patent Cases, as well as a recent decision by the Chief Judge, which explained that “[g]enerally, the ‘simplification’ issues 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.”

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