IPR's Effect On District Court Cases: Overlooked Concerns

Law360 has published the article “IPR's Effect On District Court Cases: Overlooked Concerns” written by intellectual property partner Andrew Holtman, senior counsel Melissa R. Gibson and associate Golda Lai. The article examines the potential impact of recent Patent Trial and Appeal Board decisions on related patent cases pending in district court.

Among the topics discussed:

Undue Prejudice to the Nonmoving Party – “[C]ourts determine if granting a stay will unduly prejudice the nonmovant. Undue prejudice, however, requires more than mere delay. Courts, for example, consider whether there is a dilatory motive by the movant based on the timing of the motion to stay compared to the timing and status of the IPR petition.”

Stage of District Court Proceedings – “When deciding whether to grant a stay pending IPR proceedings, courts also consider how far the litigation has progressed. The earlier the stage of the district court proceeding, the greater the reason for a court to grant a stay. Each court, however, differs in its view on the meaning of "early" in the litigation.”

Simplification of Issues – “[C]ourts consider whether granting a stay will simplify issues before it. A stay is favored where the outcome of the IPR either assists the court in determining patent validity or eliminates the need to try infringement since asserted claims have been canceled.”

In conclusion, the authors note, while courts generally consider the same three factors to grant a stay pending an IPR proceeding, the emphasis placed on those factors differ. They added, “Overall, most courts place the greatest weight on whether a stay can simplify issues — even where the other factors weigh against a stay. In particular, courts tend to view this factor as favoring a stay if the defendant agrees to be estopped by the IPR decision.”