The ground rules for when stays are available when an IPR has been filed are fairly well established locally, but occasionally a new fact crops up and requires analysis, or a court provides an updated analysis of the issue. Such was the case here.
This time the verdict is from Tyler, where a jury passed on a claim that had been stayed previously while proceedings played themselves out at the PTAB. The jury found the single asserted claim infringed, that the claim wasn’t shown by clear and convincing evidence to be invalid, and assessed damages of $1.5 million. I have attached the verdict form and some other tidbits I thought might be of interest on the stay issue.
Motions for a stay of district court proceedings can have a variety of bases – PTAB proceedings, other pending litigation, pending motions, dog ate your homework, etc. This case presented a new one – whether a case should be stayed while an arbitrator decided whether certain severed claims are subject to arbitration.
Okay, the analogy is imperfect, but if “renewed” isn’t legalese for “please” I don’t know what is. But what was actually at stake was a little less dramatic than Toby’s case. The defendant in this case was simply renewing its motion to stay the case pending IPR proceedings after the proceedings were instituted by the PTAB. But the facts were a little outside the norm.
This case presents one of the more interesting examples of partial stays due to parallel proceedings before the PTO, with the court staying some of the claims, and severing and proceeding to trial on others. It also illustrates the consequences of not joining in pending IPRs.
The defendant in this case asked the Court to dismiss 29 codefendants who were alleged to be its customers, or in the alternative sever or stay the plaintiff’s claims against them. It asserted misjoinder under FRCP 21 and judicial economy.
The issue of when cases should be stayed due to pending IPR proceedings, and what effect those proceedings will have on the district court litigation if they are resumed are issues of interest to many patent litigators. This opinion issued earlier today addresses both.
Earlier today Judge Gilstrap granted a motion staying a consolidated patent case pending the resolution by the Federal Circuit of a mandamus petition that has been filed in another case. The Court declined to stay the case pending resolution of two IPR proceedings. The ruling is worth studying because of what the motion sought, as discussed below.
While you’re enjoying Parker’s perfect snow angel from Tuesday, I wanted to note that the segment of patent litigation that was affected the most significantly by TC Heartland was pharmaceutical cases, and as I discussed in my paper presented in November, one of the potential solutions to the additional venue obstacles is multidistrict litigation (MDL) proceedings.
One recent EDTX case indicates that that perennial bridesmaid in search of a wedding may actually be approaching at least one altar.
Plaintiff filed six patent cases asserting four patents, which were later consolidated. Defendant sought a stay of the consolidated cases, and Judge Gilstrap recently granted the motion as set forth below.