e-Watch, Inc. v. ACTi Corporation, Inc., 5-12-cv-00695 (TXWD August 9, 2013, Order) (Mathy, M.J.).
Tuesday, August 13, 2013
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."