Monday, October 5, 2015

Delay Filing IPR Petition Weighs Against Litigation Stay

The court denied defendants' motion to stay two of plaintiff's actions pending fourteen inter partes review and reexamination proceedings, eleven of which were initiated by third parties, and found that the undue prejudice to plaintiff weighed slightly against a stay. "Significant delay is a consideration here, because many of the inter partes review proceedings were not filed until almost a full year after Plaintiff filed its complaint in this case. . . . If a defendant desires a stay, it should endeavor to minimize prejudice to a plaintiff, by diligently conducting a prior art search, and then drafting and filing an inter partes review petition if it desires to do so. . . . [A defendant] filed its inter partes review petition on the one-year statutory deadline. Staying this case until completion of the inter partes review proceedings would mean that this case would likely not get started for at least two-and-a-half years after the filing of the complaint. Such a pace would not be appropriate for the prompt dispatch of judicial business. . . . While the absence of competition between the parties weighs against a finding of prejudice, that aspect is outweighed by possible harm from the slow pace to resolution that a stay would produce."

Signal IP, Inc. v. Ford Motor Company, 2-14-cv-13729 (MIED September 30, 2015, Order) (Goldsmith, J.)

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