Dish’s Motion to Stay, filed shortly before the Markman hearing, asked the Court to stay the proceedings in this litigation for six months on the basis that it was going to be filing an Inter Partes Review (“IPR”). I know that you know what the outcome is going to be, but let’s look at the opinion anyway.
This is a motion to sever and stay the plaintiffs’ claims against customer defendants. The Court’s ruling is of interest because while the motion was granted, the basis was very specific, and not based on the customer suit exception.
This may be one of the shorter orders granting a motion to stay under the customer suit exception – but that tends to happen when they’re unopposed. Still, the order is worth a quick read because it tells you something about the case and the docket.
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.