Friday, January 9, 2015

Assignor Estoppel Defense No Basis For Denying Stay Pending IPR

The court granted defendant's motion to stay pending its petition for inter partes review and rejected plaintiff's assignor estoppel argument. "[Plaintiff] argues that it will be tactically disadvantaged by a stay because it will be unable to promptly take discovery on and litigate its defense that 'an assignor and parties in privity with the assignor are estopped or barred from asserting invalidity defenses.'. . . [Plaintiff] argues that it will be tactically disadvantaged if the case is stayed in favor of IPR because it will be prevented from litigating its assignor estoppel theory in this case first, and it will be unable to develop a record on the issue of assignor estoppel to present to the Federal Circuit or the Supreme Court on review of any unfavorable PTAB decision following the IPR in light of the limited discovery allowed in IPR proceedings. . . . [Plaintiff] cannot reasonably claim to be 'tactically disadvantaged' in this litigation by a statutory framework which limits the issues authorized by Congress to be raised in IPR proceedings or the discovery allowed to be taken in such proceedings."

Roche Molecular Systems, Inc. v. Cepheid, 3-14-cv-03228 (CAND January 7, 2015, Order) (Laporte, M.J.)

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