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Published on: February 9, 2015

Court Continues Stay Pending Inter Partes Review Even Though PTO Declined to Institute Review on Patent

The district court had previously stayed the patent infringement action between Nidec Motor Corporation and Broad Ocean Motor pending the PTO’s decision on whether to institute an inter partes review on three of the patents-in-suit. After the PTO declined to institute review on one of the patents, the plaintiff moved to lift the stay on that patent.

As explained by the district court, “the parties notified the Court that, on January 21, 2015, the United States Patent and Trademark Office (“PTO”) instituted Inter Partes Review (“IPR”) against the ‘895 and ‘349 Patents but it denied institution against the ‘970 Patent. The parties state that they met and conferred on January 26, 2015, but the parties did not agree as to whether the Court should lift the stay at this time with respect to the ‘970 Patent.”

The district court then determined that it would continue the stay on all of the patents. “The Court will continue the stay with respect to the ‘970 Patent. The Court believes that continuing the stay is warranted so that all of the issues in this case can be resolved at the same time and because there is potential overlap between the issues in the patents. Further, the Court does not find that any party would be prejudiced by continuing the stay. Finally, the Court believes it is in the interest of judicial economy to continue the stay and allow the PTO to perform the initial review of the patents in this case.”

The district court then ordered the parties to provide an update status report but continued the stay in place.

Nidec Motor Corporation v. Broad Ocean Motor LLC, Case No. 4:13CV01895 RLW (E.D. Mo. Feb. 2, 2015)

The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Stan Gibson at 310.201.3548 or SGibson@jmbm.com.

Stan Gibson

Stan Gibson, an experienced technology and IP trial lawyer, represents inventors, manufacturers, owners and others in litigation centering on complicated technology. Stan's practice is national in scope and he represents both plaintiffs and defendants and has litigated dozens of cases on behalf of his clients, taking many of them to trial. Although most cases settle, Stan's ability to take cases to trial enhances their value and drives favorable verdicts and settlements. Contact him at 310.201.3548 or SGibson@jmbm.com.

Greg Cordrey

Greg Cordrey, an experienced patent litigator and former flight test engineer, represents a wide range of industries including medical device, computer, e-commerce, semiconductor, automotive, aircraft, and consumer products. He has litigated patent cases nationwide and has practiced before the Federal Circuit and the U.S. Patent and Trademark office as a registered patent attorney with experience in concurrent litigation and patent reexamination proceedings. Greg is recognized as one of the "Best Lawyers in America" in IP Law, as well as a "Super Lawyer" and "Rising Star." Contact him at 949.623.7236 or GCordrey@jmbm.com.

Rod Berman

Rod Berman is recognized by the Daily Journal as one of the top 30 intellectual property attorneys in the State of California, and by the Los Angeles Business Journal as one of the top 100 attorneys in Los Angeles. Rod's practice focuses on patent, trademark, copyright, unfair competition and internet responsibilities and includes counseling, litigation, opinions, licensing and prosecution. In addition to being a registered patent attorney, Rod is a court-recognized expert in patent and trademark law, and has successfully argued before the Federal Circuit. Contact Rod at 310.201.3517 or RBerman@jmbm.com.

Andrew Shadoff

Andrew Shadoff, is a litigation partner and a member of JMBM's Patent Litigation Group. He is experienced in handling patent, copyright and trademark infringement cases. He has obtained wins for his clients at the pleading stage and on summary judgment, and has authored multiple successful briefs in appeals before California's Second District Court of Appeal and the U.S. Court of Appeals for the Ninth Circuit. Contact him at 310.712.6856 or AShadoff@jmbm.com.

Joe Mellema

Joe Mellema's practice focuses on litigation in federal and state courts, including the protection and enforcement of intellectual property rights, and business and commercial disputes. He has handled patent, trademark, copyright, trade secret, unfair business practices, antitrust, and business and commercial lawsuits in all phases of litigation and arbitration. In addition to a law degree, he has dual degrees in electrical engineering and physical sciences, and was formerly a systems engineer at Raytheon Company. Contact him at 949.623.7232 or at JMellema@jmbm.com.