Magistrate Judge Burke Grants in Part Motion to Stay Pending Inter Partes Review

April 3, 2018

Publication| Intellectual Property

In Foundation Medicine, Inc. v. Guardant Health, Inc., No. 17-807-LPS-CJB (D. Del. Feb. 15, 2018), Magistrate Judge Burke granted in part the plaintiff’s motion to stay pending inter partes review of the defendant’s three IPR petitions. Among the three petitions, the deadlines for the Patent Trial & Appeal Board’s final written decisions ranged from one to three months before the start of trial. All asserted claims in the litigation were under review in the IPRs.

In his analysis, Judge Burke acknowledged that if the Court did not stay the case or alter the trial schedule, the timing of the PTAB’s final written decisions might require the parties to spend resources unnecessarily preparing for a trial that may not occur; on the other hand, a stay could impose undue prejudice on the defendant due to the stage of litigation and because the parties were direct competitors. The Court held that the parties should complete fact discovery and stayed the remaining case deadlines. Judge Burke ordered the parties to inform the Court of the outcome of the IPRs seven days after the last final written decision issues, and to include the parties’ views regarding the scheduling of the remaining deadlines.

Key Point: The Court noted that the potential prejudice factor may have weighed more heavily against a stay if the defendant had proffered “actual record evidence” stating specifically how the ongoing, unresolved infringement allegations had affected the defendant’s business.

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