Tuesday, August 5, 2014

No Stay Pending IPR Based on Agreement to Partial Estoppel

The court denied defendants' motion to stay pending inter partes review and rejected their proposed estoppel language as potentially simplifying the issues of the case. "Defendants . . . contend that a simplification of issues exists because 'they will not contest the validity of any claim determined by the PTAB to be patentable on any ground for which the inter partes review proceeding was instituted.' The estoppel agreed to by Defendants is a far cry from the true estoppel that would normally arise from an IPR proceeding, and is essentially illusory given that Defendants retain the right to assert invalidity challenges in this proceeding in an otherwise unlimited fashion, including challenging validity with references that the PTAB considered – but rejected – as a basis for instituting inter partes review. . . . The Court finds that the possibility of issue simplification in this case is not sufficiently persuasive to weigh in favor of a stay."

Personal Audio, LLC v. TogiEntertainment, Inc., 2-13-cv-00013 (TXED August 1, 2014, Order) (Payne, M.J.)

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