Requests for stays pending CBM review aren’t as frequent as they once were, but they’re still a crucial issue when they arise. The applicable standards for stays in this context was set forth well in a recent pair of orders by an EDTX court, as analyzed below.
A key issue in motions to stay pending inter partes review is often whether a moving defendant is willing to agree that it will be bound by the statutory estoppel provisions of 35 USC 315 (C). In this case, the court had deferred ruling on the motion to stay until the defendant took a position as to whether it would agree to be stayed. In the attached order,
For defendants with potentially dispositive claim construction issues, an expedited “mini-Markman” with accompanying stay of discovery and other deadlines until after the court considers the disputed claim terms is the Holy Grail of procedural treasures. Yet another group of defendants successfully completed this crusade in the EDTX recently when, as the attached orders show, the court granted an expedited Markman hearing on three disputed claim terms, then stayed all other deadlines in the case until after the hearing.
A question that often arises in deciding motions to stay pending IPR proceedings is to what extent the IPR proceedings will simplify issues. Specifically, does the IPR cover all the asserted claims, and will the estoppel effect of the IPR decision apply to the defendants who did not institute the IPR? Where the IPR covers all asserted claims and the remaining defendants agree to be bound by the estoppel provisions of 35 USC 315, this factor usually favors a stay. This issue was presented in the attached opinion by
Judge Love recently denied a motion to stay pending inter partes review on the eve of a trial. In the attached order Judge Gilstrap affirmed the denial, finding that