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Judge Burke grants motion to stay pending IPR

Judge Christopher J. Burke recently considered defendants’ motion to stay pending IPR of plaintiffs’ patent claiming a “Method for Producing a Drill Assistance Device for a Tooth Implant.”  Sirona Dental Systems GmbH, et al. v. Dental Wings Inc., et al., C.A. No. 14-460-LPS-CJB, C.A. No. 14-540-LPS-CJB, C.A. No. 15-278-LPS-CJB (D. Del. Mar. 22, 2016).  In granting the motion, Judge Burke reviewed the three factors related to whether a stay is appropriate.  Regarding simplification of the issues, Judge Burke noted that significant simplification was possible because the PTAB granted the IPR petitions with respect to all of the claims of the patent-in-suit.  Id. at 9.  If any claims remain following PTAB review, the statutory estoppel requirement would greatly narrow the invalidity issues before this Court.  Id. at 10.  Regarding case status, Judge Burke noted that similar motions to stay in this District have been granted where, like here, the case is in its early stages.  Id. at 13-14.  Finally, with regard to prejudice to the non-moving party, Judge Burke noted that because defendants filed the IPR petitions before the statutory deadline, it would be “hard for the Court to conclude” that doing so “speaks to sharp practice.”  Id. at 16.  Judge Burke noted, however, that it was more concerning that defendants waited six months to seek a stay.  Id.  But, defendants did move for stay within a month of the PTAB’s decision to institute review, and “[t]he Court has recently noted that it 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.  Judge Burke also noted that the status of the IPR proceedings weighed in favor of stay because the PTAB will issue written decisions well before this case was scheduled for trial.  Id. at 19.  In all, the requisite factors weighed in favor of stay, despite the fact that plaintiffs could face some competitive injury.

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