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District Court Denies Motion to Stay Pending Inter Partes Review Where Trial Was Less Than a Year Away and Defendant’s Previous Attempts at Re-Examination Were Unsuccessful

Presidio Components, Inc. (“Presidio”) filed a complaint against American Technical Ceramics Corp. (“ATC”) asserting a claim for patent infringement. ATC filed a motion to stay the case pending PTO review of the patent-in-suit. Presidio opposed ATC’s motion to stay.

The district court began its analysis of the motion by noting that “this is not the first time that ATC has sought reexamination of the ‘356 patent with the United States Patent and Trademark Office (“PTO”). On July 23, 2009, ATC filed a request for ex parte reexamination of the ‘356 patent with the PTO seeking PTO review of claims 1-5, 16, 18, and 19. On July 2, 2010, ATC filed a second request for ex parte reexamination of the ‘356 patent with the PTO seeking review of the same claims. After reviewing ATC’s requests for reexamination, the PTO confirmed the patentability of claims 1-5, 16, 18, and 19.”

After the case was filed, ATC filed a petition for inter partes review (“IPR”) of the claims of the patent-in-suit. The PTO agreed to institute review of the patent and ATC then moved to stay the case.

The district court then discussed the legal standard for whether a stay should be granted pending an IPR and declined to stay the case. “After considering the factors bearing on whether to stay the case pending IPR, the Court, in its discretion, determines that a stay is not appropriate under the present circumstances. Here, trial is scheduled for April 5, 2016 and each party has produced thousands of documents to the other side. Further, before the present PTO review, ATC twice sought PTO reexamination of the patent and claims at issue in this litigation and the PTO affirmed the patentability of those claims. Moreover, ATC has not shown that Presidio, a competitor of ATC, will not be prejudiced by a stay. Verinata Health, Inc. v. Ariosa Diagnostics, Inc., 2014 U.S. Dist. LEXIS 4025, at *9 (N.D. Cal. Jan. 13, 2014) (“Courts are generally reluctant to stay proceedings where the parties are direct competitors.”) (quoting Boston Scientific Corp. v. Cordis Corp., 777 F. Supp. 2d 783, 789 (D. Del. 2011)).”

As a result, the district court concluded that the factors weighed against granting a stay pending the IPR and denied ATC’s motion to stay.

Presidio Components, Inc. v. American Technical Ceramics Corp., Case No. 14-CV-2061-H (BGS) (S.D. Cal. Apr. 20, 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