Judge Stark has issued orders staying two related cases brought by General Electric against Kontera Technologies and Vibrant Media. In May 2013, Judge Stark denied a previous request by Vibrant to stay pending resolution of the inter partes review, which was filed by Vibrant. Since that time, however, the PTAB has instituted an inter partes review of the patents-in-suit based on its preliminary findings that all asserted claims are invalid. General Electric Co. v. Vibrant Media, Inc., C.A. No. 12-526-LPS, Memo. Order at 1 (D. Del. Dec. 4, 2013). As Judge Stark explained, “Regardless of their outcome, the IPR proceedings will simplify this case, as Vibrant will be estopped from contending that certain prior art invalidates the asserted claims and/or some or all of the asserted claims will be invalidated.” Id. Additionally, “[t]he PTAB has scheduled oral argument in the IPR for February 2014, so the delay caused by a stay will likely not be especially lengthy and, therefore, is unlikely to cause GE (which does not practice the patents-in-suit) undue prejudice. While the parties and the Court have invested resources in the litigation, and the litigation has advanced significantly since May, this action is far further away from conclusion than is the IPR.” Id. at 2. On these bases, Judge Stark ordered that the Vibrant action be stayed with the exception of “permit[ing] fact discovery to be completed—reducing any risk of evidentiary staleness that might otherwise be present during the pendency of the stay—but . . . allow[ing] the parties to avoid the expense of expert discovery until after the results of the IPR are known.” Id.
Additionally, Judge Stark seemed to find it persuasive that “in the related action, defendant Kontera Technologies, Inc. has agreed, if these actions are stayed, to be estopped to the same extent as Vibrant is estopped . . . [even though] [t]his was not Kontera’s position when the Court considered Vibrant’s earlier motion.” Id. at 1-2. Accordingly, Judge Stark ordered that the Kontera case as well.