Intellectual Property – Requests for Stay

July 31, 2013

Publication| Intellectual Property

Chief Judge Sleet Denies Defendant’s Motion to Stay Pending Inter Partes Review

In Davol, Inc. v. Atrium Medical Corporation, C.A. No. 12-958-GMS (D. Del. June 17, 2013), Chief Judge Sleet denied the defendant’s motion to stay pending inter partes review, finding that the three stay factors, taken together, weighed against a stay. Specifically, the Court found that the status of the inter partes review weighed against the granting of a stay because the PTO proceedings were in their earliest stage and could be expected to last for two years.  Moreover, the PTO had not yet decided whether to grant the defendant’s petitions.  The Court also noted that the parties were direct competitors in a limited market, a factor that also weighed against a stay.

Chief Judge Sleet Grants Defendant’s Motion to Stay Pending Reexamination

In Bodymedia, Inc. v. Basis Science, Inc., C.A. No. 12-133-GMS (D. Del. June 6, 2013), Chief Judge Sleet granted the defendant’s motion to stay pending reexamination, finding that the factors of undue prejudice and simplification of the litigation favored a stay.

Judge Stark Denies Defendant’s Motion to Stay Pending Inter Partes Review

In General Electric Company v. Vibrant Media, Inc., C.A. No. 12-526-LPS (D. Del. May 3, 2013), Judge Stark denied the defendant’s motion to stay pending inter partes review, applying the same factors considered in determining a motion to stay pending inter partes reexamination.  The Court acknowledged that it had a difficult time deciding on this motion to stay because the three factors the Court weighed in assessing such a motion only slightly favored the plaintiff.

Chief Judge Sleet Adopts Magistrate Judge Thynge’s Report and Recommendation to Deny Defendant’s Renewed Motion to Stay Pending Reexamination

In ImageVision.net, Inc. v. Internet Payment Exchange, Inc., C.A. No. 12-054-GMS-MPT (by Memorandum, D.I. 65, Apr. 22, 2013), Chief Judge Sleet adopted Magistrate Judge Thynge’s Report and Recommendation denying the defendant’s renewed motion to stay pending the inter partes reexamination.  The defendant argued that the magistrate judge erroneously applied the three-factor test in determining whether a stay was appropriate, thereby rejecting Judge Robinson’s decision in Cellectis S.A. v. Precision Biosciences, 883 F. Supp. 2d 526 (D. Del. 2012).  The Court noted that Cellectis involved motions to stay pending ex parte reexamination, not inter partes reexamination.  The Court also found that the granting of an inter partes reexamination under the AIA did not displace the three-factor test that has been traditionally applied in assessing a motion to stay.

Judge Robinson Denies Defendant Google’s Motion to Stay Pending Reexamination

In Walker Digital, LLC v. Google, Inc., et al., C.A. No. 11-309-SLR (D. Del. Apr. 11, 2013), Judge Robinson denied defendant Google, Inc.’s motion to stay pending reexamination.  While the simplification and stage of litigation factors weighed in favor of a stay, the Court found that the heart of the dispute between the parties revolved around the issue of prejudice, which weighed against a stay.

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