Intellectual Property – Requests for Stay
November 8, 2013
Publication| Intellectual Property
Judge Stark Grants Defendants’ Motion to Stay Pending Inter Partes Review
In Softview LLC v. Apple Inc., et al., C.A. Nos. 12-989-LPS; 10-389-LPS (Consolidated) (D. Del. Sept. 4, 2013), Judge Stark granted defendants’ motion to stay pending inter partes review. Judge Stark found that the three stay factors favored granting the motion. Judge Stark found important that discovery was complete, “mitigating the risk of evidentiary staleness.” Judge Stark also recognized that plaintiff is a non-practicing entity and not seeking an injunction, and accordingly would likely not be prejudiced by the stay.
Judge Andrews Denies Defendants’ Motion to Stay Pending Reexamination
In Comcast IP Holdings I LLC v. Spring Commc’ns Co., LP, et al., C.A. No. 12-205-RGA (D. Del. Aug. 22, 2013), Judge Andrews denied defendants’ motion to stay pending reexamination. Judge Andrews found that defendants were seeking to gain a tactical advantage by requesting a stay, but indicated that he would be open to reconsidering a motion to stay if there was a change in the reexamination at the PTO.
Chief Judge Sleet Grants Defendant’s Motion to Stay Pending Reexamination
In Celorio v. On Demand Books LLC, C.A. No. 12-821-GMS (D. Del. Aug. 21, 2013), Chief Judge Sleet granted defendant’s motion to stay pending reexamination. Judge Sleet found that a “mere possibility” of delay did not evince undue prejudice. The Court also noted that plaintiff waited five years after having actual knowledge of the alleged infringement before filing the action, a fact that militated against undue prejudice or danger of evidentiary staleness.
Chief Judge Sleet Grants Defendants’ Motion to Stay Pending Inter Partes Review
In In re: Bear Creek Tech., Inc. (‘722 Patent Litig.), C.A. No. 12-2344 (D. Del. Jul. 17, 2013), Chief Judge Sleet granted certain defendants’ motion to stay pending inter partes review. In granting the motion, the Court noted that the non-moving defendants agreed to be estopped from challenging the validity of asserted claims as being obvious on the basis of combination of prior art, and that the PTO had “preliminarily found that there are four separate combinations of prior art that could invalidate all twenty-two claims of the patent and Bear Creek would have to prevail on all four for the patent to remain valid.”
Chief Judge Sleet Grants Defendants’ Motion to Stay Pending Inter Partes Review
In Neste Oil Oyj v. Dynamic Fuels, LLC, et al., C.A. No. 12-1744-GMS (D. Del. July 2, 2013), Chief Judge Sleet granted defendants’ motion to stay pending inter partes review. Chief Judge Sleet found that the three stay factors favored granting the motion. In particular, he found that the inter partes review may yield significant issue simplification.