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District Court Stays Case Pending Inter Partes Review After Non-Petitioning Defendant Agrees to be Bound by Estoppel Provisions

In a previous order, the district court granted a motion to stay pending Inter Partes Review (“IPR”) but deferred ruling on the Motion to Stay with respect to EMC Corporation “until EMC Corporation has filed a Notice with the Court indicating whether it is bound by the statutory estoppel provisions of 35 U.S.C. § 315(e).”

Thereafter, EMC filed a Notice stating “if the Court stays the above-captioned litigation pending resolution of the inter partes reviews filed on the asserted patents then EMC agrees to be bound by the full statutory estoppel provisions of 35 U.S.C. § 315.”

Based on this stipulation, the district court agreed that a stay would be appropriate. “The same analysis that the Court undertook with respect to HPE and Dell in its Order regarding Defendants’ Motion to Stay thus applies to EMC and the Court incorporates that analysis by reference here. In other words, simplification of the issues weighs in favor of a stay, undue prejudice to Plaintiff weighs in favor of a stay, and the status of the case weighs in favor of a stay. Indeed, the Court understands EMC to be representing that it will be bound by statutory estoppel not only with respect to Dell and HPE’s IPR petitions against the Asserted Patents, but also with respect to IPRs filed against the Asserted Patents by Oracle. Simplification of the issues thus weighs even more heavily in favor of a stay with respect to EMC.”

Accordingly, the district court agreed to stay the case with respect to EMC.

Realtime Data, LLC v. Dell Inc., Case No. 6:16-CV-00089 (E.D. Tex. Feb. 7, 2017)

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

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