Delay in Filing IPR Weighs Against Litigation Stay

The court denied without prejudice defendants' motion to stay pending their petition for inter partes review and found that the potential undue prejudice to plaintiff weighed against a stay where defendants filed their petition just before the deadline. "Moving Defendants' delay in petitioning for IPR could create at least some tactical disadvantage for [plaintiff] and a stay may unduly prejudice Plaintiff. While Plaintiffs status as a non-practicing entity reduces the prejudice it would suffer from a stay, there remains a potential for undue prejudice. The timing of Moving Defendants' filing suggests they may be seeking a tactical advantage, given they were aware of the prior art asserted in their IPR petition many months before filing the petition just three days before the statutory deadline."

Pragmatus Mobile LLC v. Amazon.com Inc., 1-14-cv-00436 (DED June 17, 2015, Order) (Stark, J.)

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The court denied without prejudice defendant's motion to stay pending its petition for inter partes review and found the potential for undue prejudice to plaintiff weighed against a stay. "Defendant's delay in petitioning for IPR could create at least some tactical disadvantage for [plaintiff] and a stay may unduly prejudice Plaintiff. While Plaintiff's status as a non-practicing entity reduces the prejudice it would suffer from a stay, there remains a potential for undue prejudice."

Copy Protection, LLC v. Netflix, Inc., 1-14-cv-00365 (DED June 17, 2015, Order) (Stark, J.)

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The court denied defendants' motions to stay pending a petition for inter partes review because the undue prejudice to plaintiff, lack of potential simplification of issues, and stage of the case weighed against a stay. "[T]he length of the inter partes review alone does not establish prejudice. Here, however, the delay is compounded by the fact that the [patent-in-suit] already had reexamination for eight years. . . . The timing of the stay request also indicates a tactical disadvantage. [Plaintiff] takes issue with [defendant] having waited almost a year after the filing of the case before requesting IPR. . . . It is unclear . . . why it took . . . 8 months after [plaintiff] disclosed its asserted claims and preliminary infringement contentions to file the IPR petition. . . . [Defendant's] nearly one-year-long delay was unreasonable. . . . [Plaintiff] maintains that the issues will not be simplified because [one defendant], who is not a party to the IPR petition, will not be bound by the PTO’s determinations of patent validity. The Court concurs with the Northern District of California that '[t]his is a real concern.'"

LakeSouth Holdings LLC v. Ace Evert Inc., 3-14-cv-01348 (TXND June 17, 2015, Order) (Godbey, J.)