E-Alert Case Updates
Delaware Federal Court Examines Factors Considered When Deciding a Motion to Stay
Advanced Microscopy Inc. v. Carl Zeiss Microscopy, LLC
Advanced Microscopy Inc. v. Carl Zeiss Microscopy, LLC involved a motion to stay an ongoing patent infringement lawsuit pending the United States Patent and Trademark Office's resolution of Defendant's petition for inter partes review (“IPR”) which sought to invalidate all claims of the patent in-suit that Plaintiff asserted against Defendant in the lawsuit. The United States District Court for the District of Delaware concluded that the motion should be denied based on the three (3) stay-related factors considered when deciding a motion to stay. Thus, Magistrate Judge Christopher J. Burke denied the motion to stay.
By way of factual background, Plaintiff Advanced Microscopy Inc. ("Plaintiff') filed a patent infringement lawsuit against Defendant Carl Zeiss Microscopy, LLC ("Defendant") in the United States District Court for the District of Delaware alleging that Defendant infringed United States Patent No. 6,313,452 (“Patent 452”). Subsequently, Defendant filed a petition for IPR with the United States Patent and Trademark Office ("PTO") seeking to invalidate all of the claims of Patent 452 that Plaintiff asserted against Defendant in the patent infringement lawsuit. Defendant then filed a motion to stay the proceedings in the lawsuit pending the PTO’s resolution of its IPR petition.
The Court began its analysis by explaining that a court has discretionary authority to grant a motion to stay, and that three (3) factors are typically considered when deciding a motion to stay: (1) whether granting the stay will simplify the issues for trial; (2) the status of the litigation, particularly whether discovery is complete and a trial date has been set; and (3) whether a stay would cause the non-movant to suffer undue prejudice from any delay, or allow the movant to gain a clear tactical advantage. See, e.g., Cooper Notification, Inc. v. Twitter, Inc., Civ. No. 09-865-LPS, 2010 WL 5149351, at *1 (D. Del. Dec. 13, 2010); Cost Bros., Inc. v. Travelers Indem. Co., 760 F.2d 58, 60 (3d Cir. 1985).
After taking into account the three (3) stay-related factors, as well as the particular circumstances of the case, the Court denied Defendant's motion, with leave to renew the motion after the PTO's Patent Trial and Appeal Board ("PTAB") made a determination on whether to institute an IPR proceeding in response to Defendant's petition. The Court determined that this course - as opposed to a decision to grant a stay pending the PTAB's ruling - was the better approach for the three (3) reasons set forth below.
First, regarding the status of the lawsuit and the IPR proceeding, the Court noted that although a schedule had been in place in the lawsuit for several months, “the parties really were still in the initial stages of the case,” and thus, “there was good reason to believe that the PTAB's decision would come before the parties had engaged in a large-scale expenditure of resources on document production or on claim construction-related activity.” In light of this, the Court was “not overly concerned” that a denial of the motion to stay without prejudice would cause Defendant undue harm, even were a stay later to be granted after the PTAB's decision was issued.
Second, the Court found that denial of the motion without prejudice to renew would allow for a better, more fully developed record as to the "simplification of issues" factor. The Court explained that clarity would come simply from receiving the PTAB's decision itself, as if no review was instituted, the asserted basis for a stay would fall away, and if the PTAB did institute a review, the Court could examine the grounds upon which review had been granted.
Third, the Court noted that it was “impacted by Chief Judge Stark's views on this subject.” The Court explained that in 2014, Chief Judge Stark, the Chief Judge of the United States District Court for the District of Delaware, issued "Revised Procedures for Managing Patent Cases," which, inter alia, stated that "generally, we will not defer the [Case Management Conference] and scheduling process solely due to the pendency of a motion to dismiss, transfer or stay.” See Honorable Leonard P. Stark, Revised Procedures for Managing Patent Cases (June 18, 2014), at 6, available at http://www.ded.uscourts.gov/judge/chief-judge-leonard-p-stark. The Court read this procedure as expressing Chief Judge Stark's preference that cases filed by a plaintiff should generally move forward, and suggesting that some caution should be exercised before granting a stay in advance of receiving the PTAB's decision.
For the reasons set out above, the Court denied Defendant's motion to stay, without prejudice to its ability to renew the motion after the PTAB issued a decision on whether to initiate the above-referenced IPR proceeding.
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