Magistrate Judge Burke Denies Stay Pending Inter Partes Review

January 5, 2016

Publication| Intellectual Property

In Toshiba Samsung Storage Technology Korea Corp. v. LG Electronics, Inc., C.A. No. 15-691-LPS-CJB (D. Del. Dec. 3, 2015), Magistrate Judge Burke continued the Court’s trend of declining to grant stays pending inter partes review (“IPR”) until the Patent Trial and Appeal Board (“PTAB”) determined whether to initiate IPR proceedings. First, Judge Burke stated that, as there has been no scheduling order issued in the case yet, there would only be some “relatively small” activity in the case between now and February 6. Judge Burke concluded that the small amount of case activity during that period would not “unduly prejudice” defendants.

Second, Judge Burke found that “receiving the PTAB’s decision itself” would simplify the issues for trial. If the PTAB declines to institute the IPR proceeding, there would be no basis for the stay. On the other hand, if the PTAB does institute the proceeding, Judge Burke stated that the Court could “examine the grounds upon which review has been granted (including which of the patent claims currently referenced in the Complaint would be the subject of that review), so as to determine the effect that the PTAB’s decision would have on simplifying th[e] case.”

Finally, Judge Burke found that the language in Judge Stark’s “Revised Procedures for Managing Patent Cases” providing that the Court will not normally delay the case schedule due to the pendency of a motion to dismiss, transfer, or stay was compelling evidence weighing against a stay. Further, Judge Burke cited Judge Stark’s statements in Copy Protection LLC v. Netflix Inc., 2015 WL 37990363, at *1 (D. Del. June 17, 2015), that simplification of the issues generally cannot favor a stay until the PTAB determines whether to initiate IPR proceedings. Judge Burke thus denied defendants’ motion to stay.

Analysis: Following the trend of this district, a stay pending inter partes review is difficult to obtain prior to institution by the Patent Trial and Appeal Board.

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