For a variety of reasons, not least of which is resources, parties do not typically want to fight the same battle in two venues. So when a defendant in patent litigation initiates an inter partes review (IPR) challenging the validity of the patent, a motion to stay district court litigation often follows. The Patent and Trademark Office reported during a recent roundtable that 80-90% of petitions to the PTAB involve patents in pending federal court litigation.2 Statistics show, however, that only 60-70% of motions to stay pending IPR are granted. However, two recent decisions – one that orders that the parties notify the district court judge as soon as a petition for IPR is filed, and the other that entered a stay before a petition was initiated – indicate that the percentage of motions to stay pending IPR is likely to increase.
Parties must notify the district court of an IPR petition as soon as it is filed -
On May 2, 2014, Judge Davis of the Eastern District of Virginia articulated in no uncertain terms to "counsel in all future patent cases, that a lawyer's general duty of candor to the Court requires counsel to timely notify the Court of requests to the PTO for institution of inter partes review when such request has the potential to affect the outcome of the concurrent litigation." Virginia Innovation Sciences, Inc. v. Samsung Electronics Co., Ltd., et al., 2-12-cv-00548 (ED Va. May 2, 2014) ("The parties should have notified this Court of the IPR petition as soon as it was filed.")
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