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District Court Lifts Stay after PTAB Confirms Eight Claims Even Though Defendant Planned to Appeal to the Federal Circuit

The district court had previously granted Defendant Respironics, Inc.’s
(“Respironics”) unopposed motion to stay the patent infringement action filed by the plaintiff, Zoll, pending an inter partes review (“IPR”) of the patent-in-suit, on which the Patent and Trademark Office (“PTO”) had instituted review. When Respironics filed the motion to stay, it had assured the district court that the length of the stay would not exceed 18 months. Based on this representation, Zoll withdrew its prior opposition to the requested stay and, based largely on the lack of opposition, the district court granted the stay.

After the completion of the IPR proceeding, the PTO confirmed the patentability of Zoll’s patent claims. As explained by the district court, “Zoll now wishes to proceed with the litigation it filed more than 2 1/2 years ago, on December 27, 2012. Oddly, however, and in tension with its prior representations that it was only seeking a stay pending IPR, and that such a stay would not exceed 18 months, Respironics opposes lifting the stay.”

The district court then found that “[t]he proper exercise of the Court’s discretion under these circumstances is to lift the stay and proceed with the litigation, just as the parties (and the Court) envisioned at the time the unopposed motion to stay was granted. The IPR proceeding is complete and the stay has been in place nearly 19 months. Respironics has pointed to no new, unforeseeable events to cause the Court to depart from the path that was set when the stay was imposed. As Zoll puts it, ‘Having taken its shot in the USPTO and failed, Respironics should not be able to preclude Zoll from pursuing its claims in this court for an indeterminate period of time.'”

The district court also held that “[e]ven ignoring this history, the Court would reach the same conclusion and lift the stay, as a further stay is not warranted. The present circumstances involve a patent infringement case that has essentially been stalled for 2 ‘/2 years, despite the claims of the patent-in-suit having been confirmed in IPR and despite the accused infringer being estopped from raising the invalidity grounds it raised or reasonably could have raised in the IPR. See 35 U.S.C. ยง 315(e)(2). The pendency of an appeal from the IPR, and the possibility that the Federal Circuit may reverse the PTO (and thereby simplify this litigation by, presumably, making it disappear), is not, in and of itself; a sufficient basis to make the patentee here continue to wait to enforce patent rights that it currently holds. Continuing the stay would unduly prejudice Zoll and unfairly advantage Respironics, in part by keeping this case at its relatively early stage for perhaps up to another year, while the appeal is briefed and decided.”

Accordingly, the district court granted the motion to lift stay despite the pending appeal to the Federal Circuit.

Zoll Medical Corp. v. Respironics, Inc., Case No. 12-1778-LPS (D. Del. July 8, 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