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Chestnut v. Apple: District Court Puts Plaintiff to the Test–Proceed on Limited Number of Claims or Continue Stay pending Inter Partes Review

In this patent infringement action, the plaintiff asserted claims from two different patents against Apple. Apple filed an Inter Partes Review (“IPR”) with the Patent Trial and Appeal Board (“PTAB”) and moved to stay the case pending the IPR.

After the district court stayed the case pending the PTAB’s decision to institute the IPR, the parties filed a status report with the district court. In the status report, the parties explained that the plaintiff had asserted 61 claims from a patent on which the IPR was instituted, and 14 claims from a second patent. The second patent was not subject to any IPR.

As a result of the status report, the district court asked the following question: “The question now is what to do about the stay I imposed pending the PTAB’s institution decision. That question requires some balancing and the exercise of discretion.”

The district court then directed the plaintiff to make a decision on how it wanted to proceed. “I will give Plaintiff ten days to decide whether it wants to elect to proceed on the presently asserted claims of the second patent and no more than ten claims of the first patent. If Plaintiff so chooses, then I will lift the stay now. I will await Plaintiff’s decision.”

Chestnut Hill Sound Inc. v. Apple Inc.,
Case No. 15-261-RGA (D. Del. Jan. 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