In enacting the Leahy-Smith America Invents Act (AIA), Congress sought to "establish a more efficient and streamlined patent system that [would] improve patent quality and limit unnecessary and counterproductive litigation costs." As part of the AIA, Congress created inter partes reviews (IPR), where the Patent Trial and Appeal Board (PTAB) may review the patentability of patent claims. IPRs are intended "to create a timely, cost-effective alternative to litigation."
IPRs often occur in parallel with district court patent litigation on the same patent, and district courts must decide whether to proceed with a case when the patent-in-suit becomes the subject of an IPR. Each district court has the inherent power to manage its docket by staying its proceedings pending IPR. Although the test varies by jurisdiction, district courts typically consider three factors when determining whether to stay pending IPR: (1) "whether discovery is complete and whether a trial date has been set;" (2) "whether a stay will simplify the issues in question and trial of the case;" and (3) "whether a stay would unduly prejudice or present a clear tactical disadvantage to the nonmoving party." In this article, Finnegan attorneys Jason E. Stach and Benjamin A. Saidman discuss how defendants can place themselves in the best position for a stay pending IPR.
Previously published in IP Litigator
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.