On August 7, 2014, Magistrate Janie Mayerson granted defendant’s motion for stay pending inter partes review (IPR) of the asserted patents and rejected plaintiff's request that defendant be estopped as a condition of the stay. In April 2014, a third party filed two IPR petitions relating to the asserted patents. The Patent Trial and Appeal Board (PTAB) issued an order for one of the two petitions, thereby instituting an IPR proceeding over one of the five asserted patents. At oral argument it was revealed that: [i] defendant had entered into a joint defense agreement (JDA) with the IPR petitioner; and [ii] the same law firm represented defendant and the IPR petitioner. Plaintiff argued that in light of the JDA and common law firm nexus, defendant was not “divorced from what is going on” with the IPRs and as such, any stay should be conditioned on defendant agreeing to be estopped from asserting the same grounds raised by the petitioner in the IPR proceeding. In response, defendant represented that it did not participate in, control, support, or pay for the preparation or filing of the IPR petitions.
In granting the stay without estoppel, the court reasoned that estoppel was not necessary because PTAB decisions become part of a patent’s file history and as such, become part of the record for any court to consider in addressing those same arguments. In addressing plaintiff’s fairness argument that it would be unfair for defendant to obtain the benefit of IPR proceedings without being bound by the arguments raised therein, the court reasoned that it would be more unfair to bound the defendant to arguments raised by a third party in a proceeding that defendant had no control over. Accordingly, the court found that regardless of the JDA and use of the same law firm by defendant and petitioner, estoppel was not a necessary condition to the stay.
Intellectual Ventures II LLC v. US Bancorp et al., No. 13 Civ. 2071 (D. Minn. August 7, 2014) (Mayeron, M.J.).