PTAB’s Institution of IPR Neutralizes Defendant’s Use of IPR for Tactical Delay

The court granted defendants' renewed motion to stay pending inter partes review after the PTAB instituted review on all claims of the patent-in-suit because the potential simplification of issues and lack of undue prejudice favored a stay. "[W]ere the Court to proceed to trial [in three months], a later USPTO decision could ultimately nullify the Court's judgment. . . . Although the Court would have to reschedule the Rule 16(b) conference and trial date, a stay will still reduce the future burden of litigation since IPR has the possibility of disposing with the entire case. . . . [B]ecause Defendants filed a Motion to Stay pending IPR the same day this Court denied its Motion to Transfer Venue, it appeared as though the stay represented a delaying tactic by Defendants. However, this factor is mitigated strongly by the PTAB's decision to institute IPR on all claims of the [patent], indicating that the PTAB determined Defendants' petition was more likely than not meritorious. . . . Even if Defendants filed their petition as a tool for tactical delay, the Court finds this factor is neutralized by the PTAB's institution of IPR on the merits of Defendants' claims."

Cobalt Boats, LLC v. Sea Ray Boats, Inc. et al, 2-15-cv-00021 (VAED November 16, 2015, Order) (Morgan, J.)