Motion to Stay Pending Inter Partes Review Denied Where Plaintiff Had Prevailed in Previous Inter Partes Review

In this patent infringement case, Plaintiff, CTP Innovations, LLC ("CTP") sued V.G. Reed and Sons, Inc. ("Reed") to stop Reed's alleged infringement of two United States patents, which pertain to systems and methods of providing publishing and printing services by a communication network involving computer to plate technology.

Reed moved for a stay of the action pending a determination of an inter partes review ("IPR") before the Patent Trial and Appeal Board (the "PTAB"). In the motion, Reed asserted "that the stay is appropriate because the PTAB's resolution of invalidity issues regarding the two patents will simplify the instant action and no party will be prejudiced by the stay.

As the district court explained, "[a]ll parties seem to agree that the Court should weigh three factors: (1) whether the stay will unduly prejudice a non-moving party; (2) whether the stay will allow for simplification of the issues in this litigation, more particularly whether the current IPR will clarify some of the issues here; and (3) whether the particular stage in the litigation makes a stay convenient. See SSW Holding Co., Inc. v. Schott Gemtron Corp., No. 3:12CV-661-S, 2013 WL 4500091, *3 (W.D. Ky. Aug. 21, 2013)."

The district court then explained that even though the litigation was at an early stage, "a stay at this particular moment would appear to unfairly prejudice Plaintiff. Third parties have already unsuccessfully challenged these patents in a previous IPR proceeding. Now, five months after that denial, other parties have filed a successive IPR petition with similar claims. No one knows the exact time required to resolve these additional proceedings, although they could stretch so far as November 2015. Any delay of this kind is inherently prejudicial to Plaintiff's right to pursue its claims. Moreover, it is not clear that the current IPR proceedings would actually resolve all the issues in this litigation. Because the IPR is at an early stage, such analysis is speculative. Finally, because the PTAB has already denied challenges to the patents in the first IPR proceeding, it would seem even less likely that the current petition would succeed."

Accordingly, the district court declined to issue the stay at the present time. "The Court believes that it would be best to begin some progress toward preparing for claim construction or other motions which could help define this case. If the PTAB should issue a decision which changes any of these assumptions or the status of the overall disputes, then the Court can certainly review this denial. In the meantime, the Court's judgment is that the parties should reach agreement on an appropriate litigation plan and proceed with it."

CTP Innovations, LLC v. V.G. Reed and Sons, Inc., Case No. 3-14-CV-00364-H (W.D. Ken. July 2014)

Written by:

Published In:

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Jeffer Mangels Butler & Mitchell LLP | Attorney Advertising

Don't miss a thing! Build a custom news brief:

Read fresh new writing on compliance, cybersecurity, Dodd-Frank, whistleblowers, social media, hiring & firing, patent reform, the NLRB, Obamacare, the SEC…

…or whatever matters the most to you. Follow authors, firms, and topics on JD Supra.

Create your news brief now - it's free and easy »

All the intelligence you need, in one easy email:

Great! Your first step to building an email digest of JD Supra authors and topics. Log in with LinkedIn so we can start sending your digest...

Sign up for your custom alerts now, using LinkedIn ›

* With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name.