Search Results for: stays in litigation

Should I Stay or Should I Go? – Co-Pending IPR and Litigation Can Lead to Discovery Obligations

Fighting a war on two fronts is rarely an enviable strategic position. While district court judges do not always grant stays of patent infringement cases until resolution of co-pending inter partes reviews (IPR’s), accused infringers considering whether to request a stay of litigation should note the PTAB’s February 28, 2018, Order in Becton, Dickinson and … Continue Reading

Recent Decisions Denying Stay of Litigation Highlight Importance of IPR Petition Timing

Defendants in litigation seeking to take advantage of IPR must file a petition within one year of the date of service of the complaint alleging patent infringement.  Defendants may be tempted to delay filing the IPR petition to avoid revealing strategy early in the litigation proceeding.  Delaying the filing, however, may risk the granting of … Continue Reading

Apple Argues to Federal Circuit a Stay of Litigation in Favor of CBM Review Should Be Nearly Automatic, Whatever the Stage of the Litigation

In appealing the denial of its request that further litigation in the Eastern District of Texas be stayed in favor of recently instituted CBM review, Apple has urged the Federal Circuit to ignore the fact that trial had already occurred, and a jury verdict rendered, in the Texas action.  In its appeal brief, Apple argues … Continue Reading

Opinions Designated As Precedential Illuminate How Factors Governing Discretionary Denial of IPR Petitions Under 35 U.S.C. §314(a) Are Applied

The Patent Trial and Appeal Board designated as precedential two opinions with opposite outcomes on the issue of discretionary denial of inter partes review (IPR) petitions under 35 U.S.C. §314(a) in July.  In Apple Inc. v. Finitiv, Inc., IPR2020-00019, Paper 15 (May 13, 2020), the Board denied institution of an IPR due to a parallel … Continue Reading

Denying a Stay and Building an Airplane While Flying It

A decision to stay patent infringement litigation falls within a federal court’s power to control its docket. But in determining whether to stay litigation pending the Patent Office’s inter partes review (IPR) of the patent, courts still are guided by three factors: (1) whether the stay will simplify the litigation, (2) whether a stay would unduly prejudice … Continue Reading

The Three-Front Assault: PeroxyChem Uses IPR, PGR and District Court to Challenge Opponent

In what could become a common patent challenge strategy, PeroxyChem, a chemical company that sells products useful in water and soil remediation, has employed a three-front assault—combining the relatively young post-grant review procedure, with an IPR and litigation–to take on one of its competitors, Innovative Environmental Technologies (IET).  Litigation together with an IPR has become … Continue Reading

Trial Verdict Means Time Has Run Out to Get a Stay

Federal district courts are inclined to stay patent litigations when requested by patent challengers on the basis that the patent-in-suit is undergoing an AIA review proceeding at the USPTO; and those not so inclined, specifically in the Eastern District of Texas, have been corrected by the Federal Circuit. But this favorable disposition toward stays occurs … Continue Reading

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