A Maryland District Court judge ordered that a stay pending inter partes review (IPR) would be contingent upon the parties stipulating to be bound by estoppel under 35 U.S.C. § 315(e), even if the IPR petitioner withdraws the petition, but the Patent and Trademark Board (PTAB) issues a decision. 

On April 30, 2014, Plaintiff CTP Innovation LLC (CTP), who owns two patents directed to printing industry systems and methods, filed a complaint against Defendant EBSCO Industries, Inc. (EBSCO) alleging patent infringement. In addition, CTP has filed patent infringement complaints against 48 additional printing companies and is a counterclaim defendant in a declaratory judgment action related to these patents. The pending cases were consolidated into a multidistrict litigation on December 12, 2014, and transferred to the District Court of Maryland for pretrial purposes. As of late January 2015, 41 of these cases have settled and eight cases are still pending.

On May 20, 2013, four petitioners filed IPR petitions regarding the patents-in-suit, which were instituted by the PTAB. Subsequently, on December 24, 2014, defendants filed a motion to stay pending IPR proceedings. CTP opposed the motion to stay, but contended that if the court grants a stay, Defendants should agree to be bound by estoppel pursuant to 35 U.S.C. § 315(e). Section 315(e) provides that an IPR review that results in a final decision estops a petitioner or real party in interest or privy of the petitioner from asserting in a civil action that a claim is invalid on a ground that was raised or reasonably could have been raised during the IPR proceeding. Although the court acknowledged that it was not aware of substantial “track record” of cases in which petitioners have withdrawn and, thereafter, the PTAB issued a written decision, it found that the balanced approach would be to estop the parties from re-litigating issued resolved by the PTAB in the event of a post-withdrawal final decision. Therefore, the court ordered that any defendants that would like to stay the case pending IPR review must enter the proposed estoppel stipulation. 

CTP Innovations LLC v. EBSCO Industries Inc., No. 1-14-cv-03884 (MDD Feb. 25, 2015, Orders 33, 39) (Garbis, J.).