In Chestnut Hill Sound Inc. v. Apple Inc., C.A. No. 15-261-RGA (D. Del. Jan. 28, 2016), Judge Richard G. Andrews addressed how the Court should handle the stay it had imposed pending the PTAB’s institution decision on inter partes review. At this time, the PTAB had instituted review on one patent-in-sui, for which Plainitff asserted 61 claims against Defendant, but there was an additional patent in the case that was not involved in any IPR for which Plaintiff asserted 14 claims against Defendant.
The Court set ten days for Plaintiff “to decide whether it wants to elect to proceed on the presently asserted claims of the [patent not in IPR] and no more than ten claims of the [patent in IPR]. If Plainitff so chooses, [the Court would] lift the stay now.”
Ultimately, Plaintiff chose to proceed as proposed by the Court, but requested that its deadline to elect the ten claims from the IPR patent be 30 days after the scheduling conference, and requested that the stay be lifted. D.I. 50.
Update: On February 16, 2016, Judge Andrews rejected Plaintiff’s request to have its election deadline extended and to drop claims without dismissing them with prejudice (D.I. 50 at n.2), explaining that such a proposal was inconsistent with the Court’s intent to simplify the proceedings and “threatened to multiply the proceedings. If Plaintiff wants to proceed now, it needs to do two things. It needs to elect ten claims of the ‘063 patent, and dismiss the remainder with prejudice.” Alternatively, Plaintiff could wait until January 2017 and proceed on all claims surviving the PTAB proceedings.