Chief Judge Stark Denies Request for Interlocutory Appeal

January 30, 2018

Publication| Intellectual Property

In Princeton Digital Image Corp. v. Konami Digital Entertainment Inc., No. 12-1461-LPS-CJB (D. Del. Dec. 11, 2017), Chief Judge Stark denied Princeton Digital Image Corp.’s request to certify an interlocutory appeal of the Court’s denial of its motion to dismiss invalidity counterclaims.

Several related lawsuits filed by Princeton Digital had been stayed during the pendency of petitions for inter partes review that certain defendants in these cases brought against the patent-in-suit. Although invalidating certain claims of the asserted patent, the PTAB declined to institute inter partes review proceedings against others. When certain defendants filed counterclaims of invalidity against those claims upon the lifting of the stay, Princeton Digital moved to dismiss on the ground that those defendants were statutorily estopped from challenging the non-instituted claims under 35 U.S.C. § 315(e)(2). The Court denied that motion to dismiss upon Magistrate Judge Burke’s recommendation.

Here, the Court denied Princeton Digital’s request to certify that denial for interlocutory appeal, finding that deviation from the final judgment rule under 28 U.S.C. § 1292(b) was not warranted. Chief Judge Stark concluded that the estoppel issue was not a controlling question of law, since other invalidity defenses were available, and it was not clear that all defendants in the related cases would be subject to the estoppel. According to the Court, any difference of opinion regarding whether estoppel would apply in this instance was not “substantial” under Section 1292(b), since Federal Circuit decisions have held that the statutory estoppel does not attach to non-instituted claims. Finally, Chief Judge Stark did not believe that an interlocutory appeal would materially advance the resolution of the litigation, since infringement would still have to be resolved, other invalidity defenses were available, and defendants who did not participate in the IPR petitions could assert the allegedly estopped invalidity defenses (and any questions regarding those defendants’ privity for estoppel purposes would have to be resolved even if the interlocutory appeal were certified).

Key Point: The Court noted that the plaintiff, by waiting five months from the denial of the motion to request that an interlocutory appeal of the denial be certified, undermined the argument that an interlocutory appeal would be more efficient.

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