On Friday, Judge Andrews addressed what happens when an IPR results in just 4 valid claims—and 79 invalid ones:
ORAL ORDER: I read the letters about lifting the stay. . . . The parties agreed to a stay through PTAB resolution of the IPRs. (D.I. 66 ). The PTAB resolution determined seventy-nine claims unpatentable and four patentable. Both sides have appealed. It does not make much sense to go forward with the overwhelming number of asserted claims likely invalid. I think it is probable that there will be a final decision from the Court of Appeals within a reasonable amount of time. That decision will, one way or another, greatly simplify this case. The request to lift the stay is DENIED.
Cytiva BioProcess R&D AB v. JSR Corp., C.A. No. 21-310, D.I. 83 (D. Del. Aug. 5, 2023).
This is pretty straightforward, but interesting nonetheless. Four valid claims is enough to go to trial, eventually—so if the parties move forward, a trial is happening one way or another. That's still not enough to lift the stay now. The Court prefers to wait out the appeal and address all of the valid claims at once.
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