Richards Layton & Finger
 

Judge Andrews Partially Lifts Stay Pending IPR After Institution Decision

March 1, 2016

In Chestnut Hill Sound Inc. v. Apple Inc., C.A. No. 15-261-RGA (D. Del. Jan. 28, 2016), Judge Andrews granted plaintiff Chestnut Hill Sound Inc.’s (“Chestnut Hill’s”) request to partially lift a stay pending inter partes review. Defendant Apple Inc., which filed two petitions covering all asserted claims of the patents-in-suit, had moved to stay the case before receiving an institution decision from the Patent Trial & Appeal Board on either petition. Although Judge Andrews granted the motion to stay, he noted that “[i]f IPR is instituted on some but not all of the asserted claims, the stay will be continued until the parties submit a joint status report with their respective positions in light of the PTAB’s decision, and the Court makes a decision on how to proceed.”

After the PTAB instituted review on one but not the second of the two patents-in-suit, Chestnut Hill moved to lift the stay. According to Chestnut Hill, the delay resulting from maintaining the stay would be substantial and prejudicial because of the potential for loss of important evidence. Apple argued that continuing the stay was warranted because the instituted inter partes review covered the majority of the asserted claims.

Facing infringement allegations based on “61 claims from a patent on which an IPR has been instituted, and 14 claims from a second patent that is not part of any IPR,” Judge Andrews granted Chestnut Hill’s request to lift the stay insofar as it wished to proceed on all asserted claims of the patent-in-suit that the PTAB declined to review, and no more than 10 asserted claims of the patent under inter partes review. The Court provided the plaintiff 10 days to decide; otherwise, the stay would remain in place.

When Chestnut Hill chose to proceed, purporting to reserve the ability to reassert other claims under inter partes review later and asking the Court to defer the deadline to identify which 10 claims it would proceed on now, Judge Andrews instructed Chestnut Hill to identify the 10 claims of the patent under review and dismiss the remainder from that patent with prejudice, or else wait for the conclusion of the PTAB proceedings. See Chestnut Hill Sound Inc. v. Apple Inc., C.A. No. 15-261-RGA (D. Del. Feb. 16, 2016).

Analysis: Judges enjoy wide discretion in case management. Parallel inter partes review proceedings, which often entail motions to stay, will continue to afford courts opportunities to exercise that discretion, perhaps in ways that neither litigant expects.