Stay Pending Third Party IPR Requires Estoppel Condition

The court granted defendants' motion to stay pending inter partes review, but conditioned the stay on defendants' agreement to estoppel. "[T]his court has previously explained in similar cases that the benefits of a stay are partially contingent upon the application of the IPR proceeding’s estoppel effect. . . . In cases such as this one, where Defendants are not parties to the pending IPRs, the fact that the patent infringement defendants are not automatically estopped jeopardizes the IPRs’ critical intended effects on any subsequent district court action. Indeed, should any claims survive the pending IPRs in this case, the expected efficiencies would be eviscerated should Defendants go on to bring invalidity arguments in this court that were raised or could have been raised before the PTAB. . . . With that [estoppel] condition in place, the court concludes that the potential for streamlining these proceedings by awaiting the final resolution of IPR proceedings weighs heavily in favor of a stay."

PersonalWeb Technologies LLC v. Google, Inc. et al, 5-13-cv-01317 (CAND August 20, 2014, Order) (Davila, J.)