Stay Pending Third Party IPR Granted Despite Lack of Estoppel

The magistrate judge recommended granting defendant's motion to stay pending a third party's petition for inter partes review of 3 of the 4 patents-in-suit even though defendant would not be estopped from reasserting invalidity arguments asserted in the IPR proceeding. "Even though: (a) there may be no formal estoppel applying to certain of [defendant's] later-advanced invalidity arguments; (b) one of the patents-in-suit is not the subject of an IPR petition; (c) it is not yet known whether the USPTO will initiate IPR proceedings regarding the three other patents-in-suit . . . if the USPTO invalidates any of the three patents-in-suit at issue or changes the scope and terms of any claim, the matters at issue in this Court will change. It is not necessary for [defendant] to be a party to IPR proceedings for the USPTO’s substantive decisions in reexamination proceedings to have an effect of the patent issues to be litigated in this case."

e-Watch, Inc. v. ACTi Corporation, Inc., 5-12-cv-00695 (TXWD August 9, 2013, Order) (Mathy, M.J.).