In the last few years, its become increasingly easy to win a motion to stay pending IPR. Nowadays, if a good number of asserted claims are subject to the IPR, you can expect a good long stay.
This naturally suggests a strategy for avoiding stays that I have been surprised not to see more of—splitting your suit into multiple different cases, each asserting just a few claims. This seems to be what occurred in ImmerVision, Inc. v. Apple Inc., C.A. No 21-1484-CJB (D. Del. Oct 17, 2023) (Oral Order).
In that case, Immervision filed two separate suits at around the same time (but not actually on the same day) asserting different claims of the same patent. The PTAB issued an IPR that covered all of the claims asserted in one of the cases, but none of those asserted in the other. Apple moved to stay both cases (which had been consolidated for pretrial purposes), and Immervision opposed, just as to the case not covered by the IPR.
Unfortunately for the Plaintiff, Judge Burke found that it would make little sense to split these consolidated cases apart and granted to the motion to stay as to both cases:
Additionally, absent a stay in this scenario, two rounds of summary judgment and Daubert briefing/hearings would need to be held (one in this action and one in the 1733 action) -- as opposed to one combined summary judgment/Daubert process. Plus, since the PTAB's Final Written Decision in the 990 patent IPR is due in late summer 2024 (prior to the October 2024 trial scheduled in this case), if the PTAB upheld the claims at issue in that IPR, then no doubt this case would need to then be paused anyway, so that the 1733 action could catch up to it. . . . In the end, with a stay allowing the Court and the parties to only have to address certain 990 patent-related issues one time (as opposed to potentially twice), and with no undue prejudice befalling Plaintiff in the event of a stay, Defendant's Motion should be granted.
Id.
I have no way of knowing if Plaintiffs' goal in splitting its case was to avoid an IPR stay (although I'm at a loss to come up with another reason). Given the above, however, I do know that I wouldn't recommend doing so in future.
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