Friday, June 12, 2015

IPR Challenging 3 of 22 Asserted Claims Justifies Stay of Entire Case

The court granted defendant's motion to stay a recently transferred case pending inter partes review and rejected plaintiff's argument that defendant was hijacking the litigation because only 2 of 11 patents-in-suit and 3 of the 22 claims were subject to review. "The patents-in-suit come from three patent families, and . . . there is a 'similarity of inventive disclosure' in the patents, which all 'share similar specifications,' and all of the asserted claims share the same 'key inventive aspect.'. . . As a result of the significant overlap among the patents-in-suit, and between the claim elements of the claims under review in the IPRs and those found in each of the remaining 19 claims, the Court agrees with [defendant] that the IPRs are likely to simplify the issues in this case, regardless of the specific outcomes of the IPRs. Conversely, denying a stay entirely, or granting a stay only as to those patents and claims under IPR, could result in costly inefficiencies for the parties and the Court by introducing a need for certain portions of discovery and motion practice to be redone after the completion of the IPRs."

ACQIS, LLC v. EMC Corporation, 1-14-cv-13560 (MAD June 10, 2015, Order) (Burroughs, J.)

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