Stay Pending IPR Conditioned on Defendants’ Stipulation to § 315(e) Estoppel Even in the Event of Withdrawal

The court conditioned a stay pending inter partes review on defendants' stipulation to be bound by estoppel even if petitioners withdrew but the PTAB still issued a final written decision. "The purpose of the stipulation is to provide defendants with a stay if they would, in substance, be treated as if they were subject to the estoppel pursuant to 35 U.S.C. § 315(e). That is, as if they were a petitioner, or 'the real party in interest or privy of the petitioner.' . . . An IPR petitioner who withdrew before decision – perhaps because it perceived that it was not likely to receive a favorable PTAB decision – would not escape the estoppel consequences. . . . I will not permit the defendants to avoid estoppel if the IPR petitioners decide to withdraw and the PTAB thereafter issues a 'final written decision.'"

CTP Innovations LLC v. EBSCO Industries Inc., 1-14-cv-03884 (MDD February 25, 2015, Order) (Garbis, J.)