A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: Stay

Judge Andrews Notes "It Has Become Fairly Routine to Stay Cases After IPR's Have Been Instituted"

Nathan R. Hoeschen, Dec. 10, 2020
IPR Stay

Motions to stay pending IPR's have gone through several trends as the IPR landscape has shifted in the years since the AIA created the procedure. In the halcyon days of 2013-2014 when the PTAB was instituting 80+% of all IPR petitions, it was fairly common in Delaware to see stays granted pre-institution. See, e.g., Peschke Map Techs. v. JJ Gumberg Co., C.A. No. 12-1525-SLR (D. Del. Apr. 24, 2014); Princeton Digital Image Corp. v. Konami Digital Entertainment Inc. et al., C.A. No. 12-1461-LPS-CJB (D. Del. Jan. 15, 2014) (mem. order).

Stay Rates Decline in the late 2010's

In the years since, as institution rates declined, stays pending institution decisions have become all but …

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Judge Bryson Issues 22-Page Opinion in Two Days, Stays Case Pending Re-Exam Just 11 Weeks Before Trial

Andrew E. Russell, Sept. 18, 2020
Re-exam Stay

Judge Bryon issued an interesting stay opinion last Friday.

The plaintiff had initially asserted six patents. Of those, four were dismissed under § 101, and the claims as to one of the remaining patents were severed and stayed pending IPR.

The case was set to go to trial on the last remaining patent on November 30, just over 11 weeks from the date of the order. But, last month, the PTO granted a request for ex parte reexamination of the sole asserted claim of that patent.

Shortly after that, Judge Bryson issued his opinion granting a motion to stay pending re-exam. A couple of interesting points:

  • What a turnaround! Defendant first indicated it intended to request a stay …
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Viable: Pre-Institution Stays Pending IPR

Jeff Castellano, July 21, 2020
IPR Stay

While pre-institution stays pending IPR are usually seen as disfavored in this District, they are occasionally granted. The circumstances must be right, however.

Judge Connolly recently ordered a stay in Allergan USA, Inc. v. Prollenium US Inc., C.A. No. 20-0104-CFC pending IPRs that had been filed—but not instituted—on all asserted claims.

He noted that a related action had already been stayed pending IPR, and that the defendants had agreed "to forgo their inequitable conduct counterclaims and defenses in both actions," and found good cause to stay. As a condition of the stay, he required that defendants dismiss their inequitable conduct defenses and counterclaims, and ordered that they would be "barred" from pursuing those defenses in both actions...

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