Chief Judge Stark Denies Motion to Stay Pending Inter Partes Review

January 5, 2016

Publication| Intellectual Property

In Greatbatch Ltd. v. AVX Corporation et al., C.A. No. 13-723-LPS (D. Del. Dec. 10, 2015), Judge Stark denied defendants’ motion to stay litigation pending: (1) appeal of a final written inter partes review (“IPR”) decision by the Patent Trial and Appeal Board (“PTAB”) that invalidated all but one claim of the patent-in-suit; and (2) resolution of a reissue application for the invalidated patent-in-suit. Judge Stark found that because defendants “delayed moving for a stay until after completion of discovery, after completion of the parties’ briefing for summary judgment and Daubert motions, almost a year after the PTAB instituted IPR, and less than two months before the pre-trial conference,” timing weighed against a stay. The Court noted that while delay in bringing a motion to stay is by itself insufficient to create undue prejudice, defendants’ delay in combination with the parties’ status as competitors weighed in favor of denying the stay. Judge Stark also found that a stay of the case would not simplify the issues for trial in light of the fact that the one claim that was not invalidated by the PTAB was the only claim that was still being asserted in the litigation. Judge Stark also rejected defendants’ argument that a decision by the Federal Circuit on the IPR and a resolution of the reissue proceeding may shed light on the claim still at issue in the case, noting that any benefit that may come from a final decision by the Federal Circuit or the reissue proceeding is “wholly speculative at this point.”

Analysis: Any motion to stay brought close to trial runs the risk of being denied.

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