Stay Pending Third Party IPR Conditioned on Defendant’s Agreement to Estoppel

The court granted defendant's motion to stay pending inter partes review, but conditioned the stay on defendant agreement to be bound by estoppel. "Typically, the benefit of a stay pending IPR is contingent in part upon the IPR proceeding’s estoppel effect, i.e., the prohibition that the petitioner is precluded from relitigating the same issues that were raised or reasonably could have been raised during the IPR proceeding. . . . [B]ecause [defendant] is not a party to the relevant IPR proceeding, [defendant] is not necessarily bound by this statutory provision. Considering the position of the parties, the strategic options available to patent infringement defendants, and the relief [defendant] requests through this motion, as well as to fully appreciate the benefits of a more streamlined litigation, the court will condition a stay on [defendant's] agreement to be bound as if it itself had filed the relevant IPR petition."

Evolutionary Intelligence, LLC v. Millennial Media, Inc., 5-13-cv-04206 (CAND June 11, 2014, Order) (Davila, J.)