T-Rex Prop. AB v. Adaptive Micro Sys., LLC, No. 16 C 5667, Slip Op. (N.D. Ill. Jan. 26, 2017) (Kendall, J.).
Judge Kendall granted defendant Adaptive Micro Systems’ (“Adaptive”) motion to stay plaintiff T-Rex’s patent suit pending potential institution of inter partes review (“IPRs”) and a covered business method review (“CBM”).
The fact that Adaptive filed a petition for IPR or CBM of each asserted claim of each asserted patent weighed in favor of a stay. Even though the Patent Trial and Appeal Board (“PTAB”) had not yet ruled upon institution, it would do so only about three months after the Court’s order. That was a relatively short wait, even if one or more were not instituted. And staying pre-institution prevents the potential of months of unnecessary, duplicative discovery and motion practice. Additionally, discovery had just begun in this case and no claim construction hearing date had been set. The early stage of the case weighed in favor of the stay.
There was no undue prejudice or tactical advantage from the stay. The parties were not competitors, the motion was filed quickly and early, and the institution decisions were due in about three months. T-Rex’s argument that it would lose prospective damages against future defendants in other cases was not credible. If the Court accepted that argument, stays could not be granted in almost any case.
The burden of litigation factor weighed in favor of granting a stay, although neither party supported its arguments beyond conclusory statements.