Judge Burke denies motion to stay pending PTO’s decision on inter partes review petitions

In a recent Memorandum Order, Magistrate Judge Christopher J. Burke denied without prejudice five defendants’ motion to stay pending the PTO’s decision on whether to grant two inter partes review (“IPR”) petitions filed for the patents-in-suit. McRO, Inc., d/b/a Planet Blue v. Bethesda Softworks LLC, 12-1509-LPS-CJB, et al. (D. Del. May 1, 2014). Plaintiff also has pending in the Central District of California (the “Central District Action”) over twenty related actions asserting the same patents-in-suit. Id. at 3. It was one defendant from the Central District Action that had filed the IPR petitions in December 2013. Id. at 4. Defendants’ motion in the instant action specifically requested that the Court stay the litigation until the later of “(1) the PTO’ s initial decision on whether to grant [the] petitions for IPR; or (2) the issuance of a claim construction order in the Central District Actions.” Id.

As an initial matter, Judge Burke determined that focusing on the issuance of the claim construction opinion from Central District Action as a triggering event was “not likely to be beneficial.” Id. at 5. While acknowledging that the Court would likely benefit from a review of the claim construction opinion, Judge Burke found that “the Central District will likely have issued its final Markman Order well before significant claim construction activity occurs in this case.” Id. at 5-6. Because there “would almost certainly be ample time-whether or not the motion to stay is granted-for the parties and the Court to react to the Central District’s Markman ruling in advance of the Court’s own claim construction efforts,” Judge Burke focused the Court’s analysis on whether to stay the actions pending the PTO’s decision on the IPR petitions. Id. at 6.

Judge Burke ultimately denied stay for three reasons. First, Judge Burke found that “because discovery has only just begun in some of the instant cases (and has not really begun in earnest in others), even if the PTO ultimately institutes IPR proceedings, and Defendants renew their motion to stay thereafter, having proceeded forward with initial discovery in the meantime will not be unduly harmful to the efficient management of these proceedings.” Id. at 6-7.

Second, denying stay would allow the Court to harmonize its approach to the stay request with the approach taken in Central District Action. Id. at 7. That is, the Central District has permitted discovery to go forward, but indicated it is inclined to consider granting stay if the PTO institutes the IPR proceedings. Id. Accordingly, Judge Burke found that by denying stay in the instant action, the Court may be provided with the opportunity to take into account the Central District’s final decision on a similar stay motion. Id. at 8.

Third, Judge Burke found that denying stay at this time and proceeding with “some initial discovery” may “allow for some additional clarity in the record,” and allow the Court to “better decide whether a stay would simplify the issues for trial.” Id. Specifically, Judge Burke found that the Court would benefit from a more clear record on, among other things, the patents claims in dispute, and “the claims and defenses to be pressed in earnest.” Judge Burke denied defendants’ motion without prejudice, leaving open the opportunity for defendants to renew their motion after the PTO’s decision on the IPR petitions. Id. at 9.

McRO, Inc., d/b/a Planet Blue v. Bethesda Softworks LLC, 12-1509-LPS-CJB, et al. (D. Del. May 1, 2014).

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