In Toshiba Samsung Storage Technology Korea Corporation v. LG Electronics, Inc., et al., C.A. No. 15-691-LPS (D. Del. June 17, 2016), Magistrate Judge Christopher J. Burke denied Defendants’ renewed motion to stay the case. The renewed motion sought to stay only the remaining portion of the case that had not already been stayed by prior order of the Court, which related to one asserted patent. The PTAB had instituted inter partes review as to some of the asserted claims of this patent. Id. at 2.
As to simplification of issues, while the Court acknowledged that there was overlap of issues in this litigation and in the IPR proceeding, it found that this factor did not favor a stay. There were more asserted claims that were not before the PTAB than were, and the IPR stood “to address a fairly circumscribed number of legal issues,” i.e. obviousness in light of only certain admitted prior art, as to the claims involved. Furthermore, “because [the unstayed patent] does appear to be fundamentally different than [the already stayed] patents in some ways, a non-trivial amount of discovery will likely be unique to that patent.” Id. at 6. On the other hand, the early stage of the case favored a stay. See id. at 6-7.
The Court concluded that “[t]he ‘undue prejudice’ considerations are mixed,” id. at 11, where the timing of the motion did not indicate “unduly prejudicial or unfair tactics are afoot,” id. at 8-9 (emphases in original), the long delay in Plaintiff’s ability to adjudicate its claims while the IPR proceedings completed, id. at 9-10, and where the parties were competitors “in a very crowded field” such that money damages could adequately compensate for infringement, id. at 10. The Court concluded that the most important subfactor was the harm the Plaintiff would face from a delay. Id. at 11. “Taking this into account, but noting that the other subfactors weigh in favor of a stay, overall the ‘undue prejudice’ factor [was] neutral.” Id.
The Court ultimately concluded that “[a] balancing of the stay factors does not favor either side . . . And so, this Motion could go either way. With the movant not having shown that the equities tilt in its favor, however, the Court will DENY the Motion.” Id. at 12.