e-Watch, Inc. v. Avigilon Corporation, 4-13-cv-00347 (TXSD November 15, 2013, Order) (Atlas, J.)
Tuesday, November 19, 2013
Third-Party IPR Warrants Stay, With Scope of Estoppel for “Redundant” Grounds to be Decided
The court granted defendant's motion to stay pending inter partes review initiated by a nonparty, but agreed to hold a separate hearing regarding potential estoppel effects. "[Defendant] asks that the estoppel extend only to those grounds actually raised in the inter partes review, not those that reasonably could have been raised. The Court notes that some of the grounds asserted by [the nonparty] in its petition for inter partes review of the [patent-in-suit] were disallowed because they were 'redundant in light of the grounds on the basis of which an inter partes review is being instituted.' The Court requires additional argument before deciding the extent to which [defendant] will be estopped. . . . [Defendant] should be prepared to discuss any invalidity grounds it would assert that were not asserted by [the nonparty] and that would not be redundant of those actually raised."