Where IPRs are concerned, post-institution stays are fairly routine. But there are also instances where cases are not stayed, and it can lead to surprising results. For example, we talked last year about a case where where a defendant won on invalidity in an IPR, but had to proceed to trial anyway—and faced estoppel on their prior art.
We saw an order in a somewhat similar category this week, when Judge Williams denied a post-trial motion to stay following the invalidation of the asserted claims by the PTO in an ex parte reexamination:
ORAL ORDER: Having reviewed the Joint Status Report, D.I. 1856, filed by the parties on October 23, 2023, the Court DENIES Defendant VMWare's request to stay. [E]ach of the three [stay] factors weigh against staying the proceedings. . . . the Court denies Defendant VMWare's request to stay the case. ORDERED by Judge Gregory B. Williams on 10/25/23. (ntl) (Entered: 10/25/2023)
The Court noted that the case is already at the post trial stage—so the "stage of the case" factor didn't held the accused infringer, in light of the potential for an appeal of the PTO's decision:
First, this case has been tried to a verdict and is in the post-trial stage of proceedings. . . . While VMWare rightfully notes that the PTO issued a Final Office Action rejecting both asserted claims of the '687 Patent, "a lengthy administrative process must still ensue before patent reexamination proceedings are finalized." Apple, Inc. v. Samsung Electronics Co Ltd, 11-CV-01846-LHK, D.I. 2831, at 6 (N.D. Cal., Nov. 25, 2013). "37 C.F.R. §§ 41.31-41.54 reveals that the PTAB appeal process may be quite lengthy, as time is allotted for noticing the appeal, filing an appeal brief, issuance of the examiner's answer, filing a reply brief to the examiner's answer, and a decision by the PTAB. There is also the potential for an oral hearing, a rehearing, and withdrawal of the final rejection by the examiner in order to reopen prosecution." Id. at 6 n. 6. This process could delay resolution of this case by years. . . . Therefore, the stage of the case weighs heavily against granting a stay.
The fact that the case had already gone to the jury likewise cut strongly against a stay:
Second, "[a]s this case has already been tried to a verdict, a stay [pending patent reexamination] will not simplify the issues at trial." . . . If the Court issues a final judgment, on the other hand, the final judgement could be immediately appealed to the Federal Circuit, and "[t]he validity of the ['687] patent will reach a faster resolution." Apple, 11-CV-01846-LHK, at 8.
The Court likewise found that a stay following a win for the patentee at trial would prejudice the patentee:
Finally, the Court finds that Cirba, as the non-moving party, would be unduly prejudiced by a stay. This matter was filed in 2019 and was tried before this Court four years later. Cirba has invested significant resources and ultimately secured a verdict in which the jury found VMWare liable for infringement. The prejudice that would result from staying this case and delaying Cirba's ability to realize the awarded damages outweighs any possible prejudice that could result to VMWare if the PTO and the Federal Circuit uphold the PTAB's Final Action. Thus, the third factor weighs heavily against a stay . . .
Basically, every one of the stay factors weighed against a post-trial stay, even in the face of a full-on invalidity finding from the PTO.
Of course, this may not be the end, and I'm sure the defendant will try to bring the events at the PTO into the case in other ways. But I thought it was worth noting as a reminder that, as a case progresses, it becomes hard and harder to hit the brakes with a stay motion.
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