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Court Denies Motion to Stay Pending New Inter Partes Review (“IPR”) Denied Where PTO Had Previously Declined to Institute an IPR on Asserted Claims and Trial Was Rapidly Approaching

The defendant, Samsung, had previously filed IPRs on several of plaintiff’s patents, which were granted and denied in part. After the plaintiff reduced its asserted claims to those that the PTO had declined to institute review, Samsung filed an additional IPR to challenging the asserted claims and moved to stay pending the new IPR.

In requesting the stay, Samsung argued that “the IPRs will address the validity of all asserted claims of the patents-in-suit” and “[c]onsidering the current status and likely disposition of each USPTO proceeding for the patents in suit, there is strong possibility that nearly all of Rembrandt’s infringement allegations will be moot.” The district court observed that the “simplification offered by Defendants is not likely based on the recent denials of IPR institutions.”

The district court further explained that “[g]iven the unique posture of this case in light of the various facts described above (e.g., Plaintiff limiting the claims to the non-instituted claims, and Defendants’ newly filed petition and its subsequent denial of institution), the Court finds that the likelihood of issue simplification in this case is not sufficiently persuasive to weigh in favor of a stay.”

Turning to the issue of prejudice, Samsung argued that Rembrandt will not be subjected to undue prejudice or tactical disadvantage because “any delay from staying the case will only be for a limited amount of time.” Here, the district court disagreed again. “[T]he Court notes the statute accords the USPTO up to six months to decide whether or not to institute an IPR proceeding and an additional twelve months to complete the IPR process. 35 U.S.C. ยง 311 et seq. By contrast, Rembrandt is entitled to its trial on the merits in February 2015. Granting a stay in light [of] any remaining IPR petitions would unduly prejudice Rembrandt and present it with a clear tactical disadvantage under these facts.”

The district court also rejected Samsung’s argument that Rembrandt would suffer no prejudice because it does not practice the patents-in-suit. “However, the mere fact that Rembrandt is not currently practicing the patents does not mean that, as a matter of law, it is not prejudiced by a substantial delay of an imminent trial date. Accordingly, taken as a whole, this factor weighs against a stay.”

Finally, the advanced stage of the case weighed against the stay. “Any remaining outstanding petitions that could potentially implicate any of the presently asserted claims were filed, or are expected to be filed, in January 2015. (Dkt. No. 208 at 1-2.) Therefore, these filings have, or will have, occurred well after discovery had closed (Dkt. No. 64), claims construction had completed (id.), and merely a few weeks from the February 9, 2015 trial date. (Dkt. No. 164.) The advanced stage of this case weighs heavily against a stay.”

Accordingly, the district court denied the motion to stay the case.

Rembrandt Wireless Technologies, LP v. Samsung Electronics Co. LTD, Case No. 2:13CV213-JRG-RSP (E.D. Tex. Jan. 29, 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