Judge Robinson denies motion for partial stay pending inter partes review

Judge Sue L. Robinson recently denied defendants’ motion to partially stay this case pending inter partes review of four of the ten patents in suit.  Intellectual Ventures I LLC v. Toshiba Corporation, C.A. No. 13-453-SLR-SRF (D. Del. May 15, 2015).  Judge Robinson began the Court’s analysis by recognizing how the America Invents Act changed the “playing field” for patent disputes:

 I start with the recognition that the instant litigation reflects a business dispute between patent owners and alleged infringers. Traditionally, most business disputes were, and should have been, resolved through a business solution; because businesses are really people, business solutions are not generally reached without the motivating force of a firm trial date. Of course, the traditional playing field for patent disputes has been dramatically altered by such legislation as the AIA and its far-reaching ramifications, including its intrusion into the courtroom and the exercise of judicial discretion, and the generation of a cottage industry for administrative review of patent validity.


Rather than resolving business disputes, we are now reviewing patents through the administrative lens of the PTO, which has had to increase its size by several thousand employees (a 31 % increase in personnel) to take on the tasks assigned by Congress. Consistent with its mandate, the PTAB has accepted 65% of the patent claims challenged through IPR, and has found 38% of those claims invalid. It perhaps is understandable, then, that I approach this exercise with a degree of cynicism.  Nevertheless, with this context in mind, I will analyze the facts of record under the appropriate standard of review.

Id. at 3-5.

Turning to the motion to stay, Judge Robinson noted that because Intellectual Ventures’ core business is licensing patents, it would suffer undue prejudice if the case is stayed.  Id. at 6.  And, Judge Robinson found that Toshiba did not demonstrate “a clear case of hardship or inequity if the motion for stay is denied.”  Id.  Because Toshiba chose to challenge validity through an IPR proceeding it “cannot complain that it is being prejudiced by the dual track proceedings it initiated.”  Id.  Judge Robinson also found that a stay would not simplify issues because the technology at issue in the IPR patents overlaps with the patents not subject to IPR, so discovery would proceed regardless of a stay.  Id. at 7.  For that reason, and because the IPR proceedings would conclude prior to claim construction, the status of the case weighed against stay.  “Rather than stay and fragment the litigation process, it makes imminent sense to proceed with the litigation and take whatever guidance and valuable analysis provided by the PTAB into account as is appropriate.”  Id. at 7-8.

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