BitTitan, Inc. v. SkyKick, Inc., 2-15-cv-00754 (WAWD August 27, 2015, Order) (Martinez, J.)
Monday, August 31, 2015
Friday, August 28, 2015
Rudolph Technologies, Inc v. Camtek Ltd., 0-15-cv-01246 (MND August 26, 2015, Order) (Montgomery, J.)
Thursday, August 27, 2015
Physician’s Instructions Constitute Direction and Control of Patients for Determining Divided Infringement Under Akamai
Eli Lilly and Company v. Teva Parenteral Medicines, Inc., et al, 1-10-cv-01376 (INSD August 25, 2015, Order) (Pratt, J.)
Wednesday, August 26, 2015
Everglades Game Technologies, LLC v GSN Games, Inc. et al, 1-14-cv-00641 (DED August 21, 2015, Order) (Sleet, J.)
Tuesday, August 25, 2015
Limited Liability Company Not Required to Identify Sole Member as Real Party in Interest in IPR Petition
Petition for Inter Partes Review by Jiawei Technology (USA) Ltd., IPR2014-00936 (PTAB August 21, 2015, Order) (Saindon, APJ)
Monday, August 24, 2015
Judges exercise broad discretion, not only in deciding whether to grant or deny a stay, but also in determining the nature of a stay, such as whether the stay will apply to the entire case or whether the stay will remain in place indefinitely or for a fixed time. Since a litigation stay can have a significant impact on the outcome of the litigation, making more informed, data-driven decisions has become more important than ever. Docket Navigator recently completed a study of district court decisions on contested motions to stay pending reexamination, IPR and CBM proceedings in the PTO from January 1, 2008 to July 31, 2015. The results of that study are reflected in this report.
NUMBER OF DECISIONS ON MOTIONS TO STAY PENDING REEXAM, IPR and CBM
The overall number of decisions on motions to stay has been steadily climbing since 2011, with the most dramatic increase in between 2013 (with 351 decisions) and 2014 (with 443 decisions). That trend is expected to continue this year, but to a slightly lesser degree.
STAYS BY DISTRICT
The Northern District of California (CAND), the Eastern District of Texas (TXED), and the District of Delaware (DED) all decided a similar number of motions to stay. CAND decided the most overall, and had the highest grant rate, 57%. TXED is the opposite, with only 25% granted and over 67% denied. Delaware granted 55%, denied 38%, and partially granted 7%.
LENGTH AND SCOPE
While the length and scope of stays vary, most stays apply to the entire case and remain in place until the PTAB proceedings have concluded. 92% of stays apply to the entire proceeding, while only 8% apply to specific patent claims or products. 93% of stays apply until the PTAB proceeding is completed while only 7% end at a specific date or event.
STAGE OF PTAB PROCEEDING
What impact does the stage of the PTAB proceeding have on whether a stay is granted or denied? Most stays were requested when the IPR was at one of two stages: (i) after a petition was filed with the PTAB, but before the PTAB rendered an institution decision (post-filing, pre-institution), and (ii) after the PTAB rendered an institution decision but before the PTAB issued a final written decision (post-institution, pre-FWD). In the first category, the stay decision was almost evenly split: 43% granted, 48% denied, 9% partially granted and denied. Many motions denied at this stage were denied without prejudice to refiling after the institution decision. In the second category, the success rates of motions to stay increased to 64%, with 25% denied, and 11% partially granted and denied. In many post-institution instances where the motion to stay was denied, the court’s reasoning was that the district court case was too far advanced to warrant a stay.
SUCCESS RATE BY JUDGE
Although each case is unique, the data reflects variances in outcomes of motions to stay based on the judge deciding the motion. For example, Judge Sleet has a very high grant rate, but Judge Mitchell and Judge Gilstrap have very high denial rates. Please note: a very limited set of judicial decisions are available due to the relatively narrow time period involved. As with all statistical properties, use caution when extrapolating from such small data sets.
The number of motions for stays is on a steady upward trend. A motion filed after the PTAB has instituted IPR is more likely to succeed than one where the petition has only been filed. But a post-filing motion to stay still has a good chance of being granted. As always, different judges have different inclinations when it comes to granting or denying these motions. The likelihood of getting an entire case stayed is very high, as is the likelihood of having a case stayed until the IPR has concluded.
Though there are obvious fluctuations between individual courts and judges, the overall trend shows that these motions are and will continue to be an important part of the litigation process.
Checkpoint Systems v. All-Tag Security, et al, 2-01-cv-02223 (PAED August 19, 2015, Order) (Tucker, J.)
Friday, August 21, 2015
Deep Sky Software, Inc. v. Southwest Airlines Co., 3-10-cv-01234 (CASD August 19, 2015, Order) (Bencivengo, J.)
Thursday, August 20, 2015
Large Audience Display Systems, LLC v. Tennman Productions, LLC, et al, 2-11-cv-03398 (CACD August 18, 2015, Order) (Real, J.)
Wednesday, August 19, 2015
Phoenix Licensing, LLC et al v. CenturyLink, Inc., 2-14-cv-00965 (TXED August 17, 2015, Order) (Payne, M.J.)
Tuesday, August 18, 2015
Possible Perjury and Falsification of Billing Records After Dismissal Does Not Justify Award of Attorney Fees
Commonwealth Laboratories, Inc. v. Quintron Instrument Company, Inc., 1-14-cv-20083 (FLSD August 14, 2015, Order) (Seitz, J.)
Monday, August 17, 2015
Energy Heating, LLC et al v. Heat On-The-Fly, LLC et al, 4-13-cv-00010 (NDD August 13, 2015, Order) (Erickson, J.)
Friday, August 14, 2015
Inadequate Pre-Filing Investigation and Continued Prosecution of Meritless Claim as to One of Four Patents Warrant Partial Award of Attorney Fees
Aleksandr L. Yufa v. TSI Incorporated, et al, 8-12-cv-01614 (CACD August 12, 2015, Order) (Olguin, J.)
Thursday, August 13, 2015
Petition for Covered Business Method Patent Review by Acxiom Corporation, CBM2015-00068 (PTAB August 11, 2015, Order) (Grossman, APJ)
Wednesday, August 12, 2015
Personalized Media Communications LLC v. Amazon.com Inc. et al, 1-13-cv-01608 (DED August 10, 2015, Order) (Andrews, J.)
Joao Bock Transaction Systems, LLC v. Fidelity National Information Services, Inc., 3-13-cv-00223 (FLMD August 10, 2015, Order) (Corrigan, J.)
Tuesday, August 11, 2015
Plaintiff's Discovery Misconduct and Late Waiver of Privilege Warrant Adverse Inference and Possible Finding of Inequitable Conduct
Regeneron Pharmaceuticals, Inc. v. Merus BV, 1-14-cv-01650 (NYSD August 6, 2015, Order) (Forrest, J.)
Monday, August 10, 2015
- Nationwide: 71% granted or partially granted; 29% denied (76 decisions)
- CAND: 82% granted or partially granted; 18% denied (11 decisions)
- DED: 90% granted or partially granted; 10% denied (10 decision)
- CACD: 50% granted or partially granted; 50% denied (6 decisions)
- TXED: 27% granted; 73% denied (11 decisions)
ContentGuard Holdings, Inc. v. Amazon.com Inc. et al, 2-13-cv-01112 (TXED August 6, 2015, Order) (Gilstrap, J.)
Friday, August 7, 2015
Adaptix, Inc. v. Dell, Inc. et al, 5-14-cv-01259 (CAND August 5, 2015, Order) (Grewal, M.J.)
Thursday, August 6, 2015
ArrivalStar SA et al v. Demandware, Inc., 9-15-cv-80098 (FLSD August 4, 2015, Order) (Marra, J.)
Wednesday, August 5, 2015
To view summaries of the decisions with links to the underlying court documents, click here. To be notified of new decisions on this issue, click the link then click “create alert” at the bottom of the search results.
General Protecht Group, Inc., et al v. Leviton Manufacturing Co., Inc., 1-10-cv-01020 (NMD August 3, 2015, Order) (Browning, J.)
Tuesday, August 4, 2015
IRS Determination That License Agreements Were Not Arms Length Not Relevant to Determination of Reasonable Royalty
Medtronic Sofamor Danek USA, Inc., et al v. Nuvasive, Inc., 3-08-cv-01512 (CASD July 31, 2015, Order) (Dembin, M.J.)
Monday, August 3, 2015
Par Pharmaceutical, Inc. et al v. TWi Pharmaceuticals, Inc., 1-11-cv-02466 (MDD July 30, 2015, Order) (Blake, J.)