On July 17, 2014, Judge John Heyburn of the Western District of Kentucky denied the Defendant’s motion to stay the action pending inter partes review of the two patents-in-suit. The court based its denial, in part, on the Patent Trial and Appeals Board’s (“Board”) previous decision not to institute inter partes review filed by a third-party.

On May 9, 2014, CTP Innovations, LLC (“Plaintiff”) filed a complaint accusing VG Reed and Sons, Inc. (“Defendant”) of infringing two patents directed to publishing and printing technology. A third-party, Printing Industries of America (PIA) had previously filed inter partes review petitions challenging the validity of the patents-in-suit. In December 2013, the Board denied those petitions, finding that PIA had not demonstrated that there was a reasonable likelihood it would prevail with respect to invalidating at least one claim of the patents-in-suit. Thereafter, on May 20, 2014, other third-parties (i.e., Eastman Kodak Co., Agfa Corp., Esko Software BVBA and Heidelberg, USA) filed four more inter partesreview petitions directed to the two patents-in-suit (two petitions for each patent). Based on these four inter partesreview petitions, Defendant moved to stay the district court litigation pending a final written decision by the Board.

The court denied the motion after considering the totality of the circumstances, including the following three factors: (1) whether the stay will unduly prejudice the non-moving party; (2) whether the stay will allow for simplification of the issues in the litigation and/or clarify some of the issues; and (3) whether the particular stage in the litigation makes a stay convenient. Although the stay motion was filed early in the litigation (i.e., one month after filing of the complaint), the court stated that a stay would unfairly prejudice Plaintiff because the inter partes review proceedings could stretch as far as November 2015 and because the previous denial to institute inter partes review makes it “seem even less likely that the current petition[s] would succeed.” The court did note, however, that it could potentially review its denial of a stay if the Board were to issue a decision that changes any of the court’s assumptions or the status of the overall dispute.

CTP Innovations, LLC v. VG Reed and Sons, Inc., No. 3-14-cv-00364 (WDKY July 18, 2014, Order)