In a further development in an area where numerous district court judges have issued divergent opinions, a court in the Northern District of California granted a stay pending inter partes review (IPR) of the asserted patent claims, even though defendants Google, Inc. and YouTube, LLC were not the petitioners in the IPRs. Personal Web Techs., LLC v. Google, Inc. et al., 5:13-CV-01317-EJD, Dkt. 303-3 (N.D. Cal. Aug. 20, 2014) (J. Davila). While stays pending IPRs are being granted in a high percentage of cases, such stays frequently prevent a petitioner (or real party in interest of the petitioner) from later raising any arguments that it raised or could have raised before the PTAB under the estoppel provisions of 35 U.S.C. § 315(e)(2).
In weighing whether to grant a stay in light of the pending IPRs, the court primarily focused on whether a stay would simplify the issues before the court. In doing so, the court reiterated that the majority of claims at issue (37 of 47) were subject to inter partes review. Because the PTAB had already reviewed and invalidated six of the claims that were asserted against Google and YouTube, and later instituted review of 31 more claims after determining there was a reasonable likelihood of unpatentability, the court stated that "this case likely stands to be significantly curtailed by the PTAB's anticipated decisions." Slip op. at 8. As a result, the court held that the simplification of issues factor favored a stay. The court also looked at the stage of the proceedings, determining that it was a neutral factor, and the risk of undue prejudice, determining that it also weighed in favor of a stay.
To address concerns that the defendants would not be bound by the outcome of the pending IPRs, and could thus re-raise the same arguments presented during the IPR to the district court, Judge Davila conditioned a stay on the Defendants' agreement "to be bound as if they themselves had filed the relevant IPR petitions." Slip op. at 9. The defendants ultimately accepted the court's conditional grant of a stay, and the stay was ordered.
Other judges, like Judge Davila, have required defendants to agree to be fully estopped as if they were IPR petitioners. Alternatively, judges have granted stays to non-petitioners while requiring either no estoppel or estoppel that is limited to issues that were actually raised before the PTAB. Some courts have denied such stay requests entirely. It thus remains to be seen if a consistent trend will develop for the grant of stays pending IPRs to non-petitioners, as well as the extent of estoppel (if any) that will be required.
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