Stay Pending IPR Conditioned on Non-Petitioner’s Agreement to “Weaker” Estoppel

The court conditionally granted a non-petitioner defendant's motion to stay pending inter partes review contingent upon defendants' agreement to be subject to "weaker" statutory estoppel due to the defendant's non-involvement with the IPR proceedings. "[B]ecause [defendant] is not one of the IPR petitioners, [it] would not be precluded under 35 U.S.C. § 315(e)(2) from reasserting invalidity contentions rejected by the PTO. . . . If [defendant] and IPR petitioners communicate on strategy, [defendant] should be bound by the full statutory estoppel provision. If, however, [defendant] has no input on the IPR strategy, it should not be precluded from raising arguments that could have been raised in the IPR proceedings. At the hearing, [defendant] represented to the court that it did not assist the IPR petitioners with any prior art search, that it took no part in drafting the IPR petitions, and that it is not in communication with the IPR petitioners concerning the IPR. . . . [R]equiring [defendant] to submit to a weaker estoppel foreclosing it from relitigating claims made and finally determined in the IPR proceedings is necessary to effect the PTO’s interest in protecting the integrity of PTO proceedings and in preventing parties from having a 'second bite at the apple.' The court thus conditions the stay on [defendant's] agreement to be estopped only from asserting any invalidity contention that was actually raised and finally adjudicated in the IPR proceedings."

Evolutionary Intelligence, LLC v. Sprint Nextel Corporation et al, 5-13-cv-04513 (CAND February 28, 2014, Order) (Whyte, J.)