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Premature Motion to Stay Pending Inter Partes Review Denied Where Patent Trial and Appeal Board Had Not Yet Granted the Petition for Review

Reflectix, Inc., Innovative Insulation, Inc., TVM Building Products, Inc., Energy Efficient Solutions, LLC, and Home Depot U.S.A., Inc.’s (collectively, “Defendants”) filed a motion to stay pending and Inter Partes Review (“IPR”) that was filed with the Patent Trials and Appeals Board (“PTAB”). The plaintiff opposed the motion to stay on the grounds that the IPR had not yet been granted for review by the PTAB.

In analyzing the motion to say, the district court noted that “it has the inherent power to control its own docket, including the power to stay proceedings. See Clinton v. Jones, 520 U.S. 681, 706 (1997) (‘The District Court has broad discretion to stay proceedings as an incident to its power to control its own docket.’). How to best manage the court’s docket ‘calls for the exercise of judgment, which must weigh competing interests and maintain an even balance.’ Landis v. N. Am. Co., 299 U.S. 248, 254-55 (1936).”

The district court then analyzed the relevant factors for determining a stay pending an IPR. “In deciding whether to stay litigation pending patent reexamination and inter partes review, courts usually consider three factors: (1) whether a stay will unduly prejudice or present a clear tactical disadvantage to the nonmoving party; (2) whether a stay will simplify the issues in question and trial of the case; and (3) whether discovery is complete and whether a trial date has been set.”

Because the PTAB had not yet granted the petition to institute the proceeding, the district court found that this was dispositive of the motion to stay at this stage. “Where a motion to stay is filed before the PTAB institutes any proceeding, Courts often withhold a ruling pending action on the petition by the PTAB or deny the motion without prejudice to refiling in the event that the PTAB institutes a proceeding. VirtualAgility Inc. v., Inc. 759 F.3d 1307, 1316 (Fed. Cir. 2014) (citing Checkfree Corp. v. Metavante Corp., No. 12-cv-15, 2014 WL 466023, at *1 (M.D. Fla. Jan. 17, 2014)).”

The district court also found that the potential for simplification of issue was speculative. “The record here does not suggest that the PTAB has granted the petition to institute, and it is not apparent that a grant of the petition is forthcoming. Thus, the potential for simplification of issues is – at this stage – entirely speculative.”

As a result, the district court denied the motion “without prejudice to Defendants’ right to file a motion to stay if the PTAB grants the petition to institute.”

Promethean Insulation Technology LLC v. Sealed Air Corporation, Case No. 2:13-CV-1113-JRG-RSP (E.D. Tex. Nov. 21, 2014)

The authors of are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Stan Gibson at 310.201.3548 or