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It Is Cold Out There: District Court Denies Joint Stipulation to Stay Case Pending Inter Partes Review — Twice

In consolidated patent infringement actions between Arctic Cat and Polaris, Artic Cat filed four petitions for inter partes review (“IPR”) of two patents asserted by Polaris. Three days after the IPRs were filed, the parties filed a joint stipulation to stay the consolidated cases given Arctic Cat’s pending IPR petitions.

On September 1, 2015, the district court denied the parties’ request to stay. In response to the district court’s order, the parties submitted a joint letter seeking reconsideration of the order denying a stay of the consolidated cases.

The district court was not persuaded. The district court first focused on the length of time it could take for the IPR process. “Under the regulations governing IPR, Polaris has up to three months to file a preliminary response from the date Arctic Cat filed its petitions. 37 C.F.R. § 42.107(b). Following the filing of Polaris’ preliminary response, the patent office has an additional three months to determine whether to institute review. Id. If IPR is instituted, the Patent Trial and Appeal Board has one year to issue its findings, subject to a six-month extension for “good cause.” See 35 U.S.C. § 316(a)(11).”

The district court next focused on the length of time the consolidated cases had been pending before the court. “The oldest of these three consolidated cases, has been pending since 2013. The most recently filed case has already been pending for a year.”

The district court then concluded that a stay would delay the cases significantly and would be inappropriate. “Because IPR may delay the consolidated cases for up to two years, the Court concludes that a stay is inappropriate and inefficient. Under the amended joint scheduling order (ECF No. 102) these cases are ready for claim consolidation. The parties should proceed accordingly.”

Arctic Cat, Inc. v. Polaris Industries Inc., Case No. 13-cv-3579 (JRT/FLN) (D. Minn. Sept. 3, 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