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District Court Declines to Stay Action Pending Inter Partes Review (“IPR”) Where Claim Construction Briefing Had Already Occurred

After the PTAB granted Defendant’s petition for IPR on certain of the claims in the patent-in-suit, the defendant filed a motion to stay the action pending the resolution of the IPR. The plaintiffs objected to a stay, but alternatively advocated for a partial stay allowing them to move forward with their causes of action related to Claims 12, 18, 20-22, and 25, which were not being reviewed by the PTAB.

The district court began its analysis by noting that before the court could rule on the motion to say, the claim construction deadlines approached and passed and neither party asked the district court to extend the claim construction deadlines due to the pending motion for a stay. Instead, both parties filed their opening and responsive claim construction briefs.

The defendant had argued in its motion for stay that a stay would be more efficient than proceeding with the litigation. “More specifically, Defendant contended that a stay could preserve resources by narrowing the scope of claim construction and by allowing this Court to use the PTAB’s analysis to assist it in the claim construction process.”

Despite this argument, the defendant “prepared its presumably costly claim construction briefs and appears prepared for a Markman claim construction hearing that this Court could set in the next couple months pursuant to N.D. Ind. L.P.R. 4-1(f). Accordingly, the preservation of resources Defendant sought is no longer possible or, at the least, has been diminished considerably now that the claim construction process is in full gear.”

Accordingly, because the parties had filed their claim construction briefs, the district court denied without prejudice the motion to stay the action pending the IPR.

Richard Gramm v. Deere and Co.
, Case No. 3:14-CV-575-TLS-CAN (N.D. Ind.
Jan. 11, 2016)

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