Richards Layton & Finger

Chief Judge Stark Denies Motion to Stay Pending Inter Partes Review

January 30, 2018

In President & Fellows of Harvard College v. Micron Tech., Inc., No. 17-1729-LPS-SRF (D. Del. Jan. 8, 2018), Chief Judge Stark denied the defendant’s motion to stay pending inter partes review. Although six claims among the two asserted patents were under inter partes review, the PTAB declined to institute review of the seventh claim asserted in this litigation. For this reason, because the outcome of the IPR was uncertain, and because the PTAB’s final written decision would likely still be subject to further appeal after trial in this action (scheduled to take place in ten months), the Court denied the motion. According to the Court, these circumstances outweighed any potential for simplification resulting from a stay.

Key Point: The Court declined to stay the case pending inter partes review when a single dependent claim among those asserted in the litigation would not receive scrutiny at the PTAB, even though the PTAB had instituted inter partes review of the independent claim underlying that dependent claim.