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Judge Robinson denies motion to stay pending IPR


In Courtesy Products, L.L.C. v. Hamilton Beach Brands, Inc., C.A. No. 13-2012-SLR-SRF (D. Del. Sept. 1, 2015), Judge Sue L. Robinson denied defendant’s motion to stay litigation pending IPR of U.S. Patent Nos. 7,311,037 (“the ’037 patent”) and 7,770,512 (“the ’512 patent”). In addition to the ’037 and ’512 Patents, plaintiff is also asserting U.S. Patent No. 7,258,884 (“the ’884 patent”) against defendant. Id. at 1. As Judge Robinson explained, “[t]he PTAB declined to institute IPR proceedings with respect to, inter alia, the ’884 patent or to asserted claims 19 and 26 of the ’037 patent.” Id. at 2. As to the stage of the proceedings, “the parties have pursued fact discovery and just commenced the claim construction exercise. Trial is scheduled to commence in March 2017.” Id. Finding that stay was not warranted, Judge Robinson first observed that “the IPRs instituted by the PTAB do not address all of the claims at issue, meaning that the parties’ dispute will not be fully resolved by the IPRs, regardless of the outcome of such.” Id. at 3. Second, Judge Robinson explained that “if the outcome of the PTAB is not favorable to [defendant], [defendant] has the option of asserting the rest of its arsenal of defenses in this court, not only prolonging the ultimate resolution of the dispute, but expending the resources of the parties and two public agencies.” Id. Finally, and “perhaps most significantly,” Judge Robinson noted that “[plaintiff] is in direct competition with, and has lost business to, [defendant].” Id.

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