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District Court Agrees to Stay Action Pending Inter Partes Review (“IPR”) But Only if Defendants Agreed to Be Bound by Estoppel Provisions Even if They Withdraw from the IPR

After the defendants moved to stay a patent infringement action pending an IPR, the district court analyzed the impact of a potential withdrawal of petitioners from the IPR. The district court began its analysis with the understanding that this was a contingency that might not occur. “The contingency of a PTAB decision after IPR petitioner withdrawal would arise only if all IPR petitioners were to withdraw. I have no idea whether this is at all likely. Nor do I have a basis to speculate upon the reasons why a PTAB petitioner may choose to withdraw after the case has progressed to the point at which a written decision would be appropriate.”

The district court then discussed the stipulation that would provide defendants with a stay and whether that stipulation should be conditioned. “The purpose of the stipulation is to provide defendants with a stay if they would, in substance, be treated as if they were subject to the estoppel pursuant to 35 U.S.C. § 315(e). That is, as if they were a petitioner, or ‘the real party in interest or privy of the petitioner.’ 35 U.S.C. § 315(e). An IPR petitioner who withdrew before decision – perhaps because it perceived that it was not likely to receive a favorable PTAB decision – would not escape the estoppel consequences.”

The district court then found that the defendants’ proposal would present an unbalanced situation. “It appears that, under defendants’ proposed paragraph 15, a post-withdrawal PTAB decision would present an ‘unbalanced’ situation as between Plaintiff and the defendants. If the PTAB decision were favorable to the defense, the Plaintiff would be ‘estopped’ from relitigating in the district court, issues resolved by the PTAB since, presumably, the claims would be invalid or modified. On the other hand, if the PTAB decision were favorable to the Plaintiff, the defense would not be ‘estopped’ from relitigating the PTAB issues in the district court.”

Accordingly, the district court modified the stipulation to preclude the defendants from withdrawing from the petition and avoiding the estoppel effects from the IPR. “On balance, and to conclude the instant discussion, I will not permit the defendants to avoid estoppel if the IPR petitioners decide to withdraw and the PTAB thereafter issues a ‘final written decision.’ Id.

In re CTP Innovations, Case No. MDL-2581 (D. Md. Feb. 25, 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