Court Takes Issue with DJ Filing Prior to IPR

Patent infringement defendants seek IPR of patents asserted against them at the PTAB as an alternative to higher cost litigation. That is, a primary benefit of seeking IPR is the ability to seek a stay of the costlier district court action on the basis that the outcome of the IPR may moot the dispute through cancellation of the asserted claims, or at least greatly simplify the issues for trial.

Yet, not all patent litigation is initiated by patent owners. Often times a potential defendant will seek a Declaratory Judgment (DJ) to secure a favored district court forum in anticipation of an imminent litigation in a less favorable district (typically Texas)

Recently, the District of Delaware considered the impact of such proactive conduct on the typical IPR stay analysis.Continue Reading PTAB Stay Calculus Considers DJ History

SAS Weighs in Favor of Stay Pre-Institution

At the time SAS Institute first raised its challenge to the partial institution practices of the Patent Trial & Appeal Board (PTAB), I explained that should this argument ultimately prevail that it would be bad news for Patent Owners. Patent Owners facing a motion to stay pending PTAB review frequently leveraged partial institutions to defeat the stay. Such motions were denied because one of the factors considered in the motion analysis is the potential for “simplification of issues for trial.”  And where a trial would eventually be conducted regardless of PTAB outcome — the case when there was a partial institution — this factor weighed strongly in favor of Patent Owners continuing the district court litigation .

Post-SAS, this argument is now gone. The impact of SAS on common stay scenarios is already being felt by Patent Owners.
Continue Reading New SAS Reality Impacts Motion to Stay Analysis