The district court had previously stayed all proceedings in the pending an IPR. The district court issued the stay because the USPTO proceedings had the potential to resolve the validity of most of the claims in the patents-in-suit.
After the stay, the USPTO declined to institute the IPR with respect to two of the patents and agreed to review only a limited number of claims related to the third patent. Plaintiff Cequent Performance Products, Inc. (“Cequent”) moved to lift the stay because the USPTO entirely refused to institute inter partes review proceedings on two of the patents (the ‘780 and ‘352 Patents) and refused to institute an inter partes review proceeding on nine claims related to the third patent.
In response, the Defendant Hopkins Manufacturing Corporation (“Hopkins”) argued that lifting the stay would be premature since it had requested rehearing of the USPTO’s decision with respect to the ‘352 and ‘993 Patents. Hopkins also contended that the district court should maintain the stay because the USPTO had decided to institute review on 12 claims of the ‘993 Patent, which could still simplify the issues in this action.
The district court concluded that the reason for instituting the stay – “the potential that the inter partes review proceedings could materially simplify the dispute currently before the Court – no longer exists.” First, the district court noted that the USPTO had denied Hopkins’ requests for rehearing with respect to the ‘352 and ‘993 Patents prior to the hearing on the motion to lift the stay. “Therefore, there is no chance that inter partes review will simplify these proceedings with respect to those patents.”
Second, the district court concluded that the “single inter partes review proceeding still pending concerns only 12 of the 48 asserted patent claims as to the ‘993 Patent. The discovery in this action will likely be substantially be the same no matter the outcome in the pending inter partes review of the ‘993 Patent because the same brake controllers are accused of infringing the ‘780 and ‘352 Patents. Moreover, the USPTO will almost certainly make its final decision in the pending inter partes review proceeding before this Court decides dispositive motions, thereby preventing a waste of judicial resources. Accordingly, the Court does not believe that the inter partes review with respect to the ‘993 Patent will materially simplify these proceedings.”
As a result, the district court lifted the stay of the litigation.
Cequent Performance Products, Inc. v. Hopkins Manufacturing Corp., Case No. 13-cv-15293 (E.D. Mich. Nov. 13, 2015)
The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Stan Gibson at 310.201.3548 or SGibson@jmbm.com.