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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 are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Stan Gibson at 310.201.3548 or