As we've noted in the past, it's fairly routine to stay cases once an IPR is instituted. But the Court has at least once denied a stipulated stay where the IPRs were not yet instituted.
Last week the visiting Judge Choe-Groves denied a stipulated stay where the PTAB had instituted an IPR for two out of three patents-in-suit—leaving one patent not subject to an IPR, as the parties explained in the stip:
WHEREAS, Teladoc filed three petitions for inter partes review (“IPR”) (Nos. IPR2024-00618, IPR2024-00616; and IPR2024-00617) of the Asserted Patents;
WHEREAS, the Patent Trial and Appeal Board (“PTAB”) instituted IPRs on the ’554 and ’142 Patents on September 16, 2024 and September 17, 2024;
. . .
NOW, THEREFORE, IT IS HEREBY STIPULATED by the parties, subject to the approval of the Court, that:
1. The above-captioned matter is stayed until such time as the PTAB has issued a final written decision in each of IPR2024-00616 and IPR2024-00617 relating to the ’554 and ’142 Patents, respectively.
Data Health Partners, Inc. v. Teladoc Health, Inc., C.A. No. 23-160-JCG, D.I. 38 (D. Del. Oct. 7, 2024).
The Court denied the stipulation without comment:
Upon consideration of the Stipulation and Proposed Order for Stay Pending Inter Partes Review (D.I. 38), and all other papers and proceedings in this action, it is hereby
ORDERED that the Stipulation and Proposed Order for Stay Pending Inter Partes Review (D.I. 38) is denied.
Id., D.I. 39 (D. Del. Oct. 24, 2024).
The case has been pending for quite a while, but due to stipulated extensions, discovery is just getting started. It was filed in February 2023, and the motion to dismiss wasn't filed until September 2023. The Court resolved that motion in May 2024, and issued a scheduling order just last month.
The docket doesn't say why the stipulation was denied, but it could be because of the length of time the case has been pending (over 18 months), or because the IPR was not instituted on one of the three patents—or both. The Court may also think that the case has been lingering with multiple stipulated extensions, and the pressure of the litigation will help the case resolve. We'll have to see if there are any further developments as the deadlines start hitting.
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