Stipulation to Waive §§ 102 and 103 Defenses Weighs in Favor of Stay Pending IPR

The court granted defendant's motion to stay pending its petition for inter partes review because the potential simplification of issues and lack of undue prejudice favored a stay. "The Court agrees with [plaintiff] that at this point it is unknown whether the PTAB will institute IPRs of the asserted patents. . . . Yet the Court’s concerns are assuaged by [defendant's] proposed stipulation that if the Court grants the stay, [it] will waive any argument regarding prior art under 35 U.S.C. §§ 102 or 103 -- regardless of whether or not the IPR proceedings are instituted. The Court finds this proposition persuasive, particularly given [defendant's] representations regarding the heavy monetary burden that instituting the IPRs and defending a lawsuit in district court at the same time will impose on it as a small company. . . . [W]hile the Court agrees that [the parties] are direct competitors and that [defendant] could harm [plaintiff's] competitive standing, [plaintiff] is far too vague regarding this alleged harm."

Blacoh Fluid Controls, Inc. v. Syrinix, Inc., 5-17-cv-04007 (CAND February 21, 2018, Order) (Cousins, MJ)