In a recent Memorandum Order, Magistrate Judge Christopher J. Burke denied defendant’s motion to stay pending resolution of defendant’s petition for inter partes review (“IPR”), with leave to renew the motion after the PTAB’s determination on whether to institute an IPR proceeding. Advanced Microscopy Inc. v. Carl Zeiss Microscopy, LLC, C.A. No. 15-516-LPS-CJB (D. Del. Feb. 11, 2016). Judge Burke noted “that this course-as opposed to a decision to grant a stay pending the PTAB’s ruling-is the better approach here.” Id. at 2.
First, Judge Burke explained that there is “good reason to believe that the PTAB’s decision will come before the parties have engaged in a large-scale expenditure of resources on document production or on claim construction-related activity.” Id. Judge Burke further explained that “denial of the instant motion without prejudice to renew will allow for a better, more fully developed record as to the ‘simplification of issues’ factor.” Id. at 3. In particular, “[i]f the PTAB does institute a review, the Court can examine the grounds upon which review has been granted (including which of the claims of the patent-in-suit would be the subject of that review), so as to determine the effect that the PTAB’s decision could have on simplifying this case.” Id.
Judge Burke explained that “as time has passed since the new IPR process was instituted, the Court has become less and less sure about the merit of granting a stay in favor of an IPR proceeding, when the PTAB has not even weighed in on whether to institute review.” Id. at 4. Judge Burke noted that “[a]s compared to the results from IPR institution decisions in 2013, more recent data suggests that review is being instituted in far fewer cases.” Id.
Judge Burke further noted that “the Court is . . . impacted by Chief Judge Stark’s views on this subject.” Id. at 5. Judge Burke first noted that “[i]n mid-2014, Chief Judge Stark issued ‘Revised Procedures for Managing Patent Cases.’” Id. Judge Burke reads that procedure in relevant part “as expressing Chief Judge Stark’s preference that, in the main, cases filed by a plaintiff should move forward.” Id. Judge Burke also noted that “in recent opinions, Chief Judge Stark has . . . stated 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.