In a recent Order, Judge Gregory M. Sleet granted defendants’ motion to stay pending inter partes review and the resolution of defendants’ motion to dismiss in part. Amkor Technology, Inc. v. Synaptics, Inc., et al., C.A. No. 15-910-GMS (D. Del. Oct. 25, 2016). Plaintiff’s complaint pleads thirteen counts, but only Count I asserts patent infringement, specifically, infringement of U.S. Patent No. 7,358,174 (“the ’714 patent”). Judge Sleet stayed Count I of the matter pending resolution of the inter partes review of the ’714 patent, but otherwise denied the motion to stay. Judge Sleet observed that “[i]t does not appear that a PTAB decision will impact any other claims in the Complaint besides the claim of patent infringement.” Id. at 3 n.5
Considering the traditional stay factors, Judge Sleet first concluded that defendants “would not gain a tactical advantage as a result of a stay of the ’174 patent infringement claim, and Plaintiff is unlikely to suffer undue prejudice.” Id. at 2. Judge Sleet found no evidence that defendants were attempting to gain an unfair tactical advantage, noting that “defendants filed the inter partes petitions for U.S. Patent No. 7,358,174 on April 8, 2016—six months earlier than the statutory deadline.” Id. at 2. n.2 Moreover, “Defendants moved to stay the case less than three weeks after filing the petitions for inter partes review.” Id. As to any undue prejudice, Judge Sleet noted that the “Patent Trial and Appeal Board (“PTAB”) has . . . decided to institute inter partes review” and that “the parties do not appear to be direct competitors.” Id. Plaintiff argued “that [it] face[d] the risk of losing market share and goodwill because Defendants fed confidential information and trade secrets to Plaintiff’s primary competitor,” but Judge Sleet found plaintiff’s argument to present “a separate issue from Defendants’ alleged infringement of the ’174 patent.” Id.
Judge Sleet also determined that “the issues before the court—with regard to Count I—will be simplified by the recently instituted inter partes review proceedings of all currently asserted claims.” Id. at 2-3. Finally, Judge Sleet noted that “[a]lthough a trial date has been set, the fact that this case remains in an early stage reinforces the prospect that a stay of Count I pending review will advance the interests of judicial economy.” Id. at 3.