United States District Court, E.D. Texas, Marshall Division
MEMORANDUM AND ORDER
PAYNE UNITED STATES MAGISTRATE JUDGE.
patent case, Defendants move the Court to stay this action
pending inter partes review (IPR) of each of the
seven asserted patents. Defs.' Motion [Dkt. # 36]. The
Court DENIES the motion.
dispute dates back to 2015, when PerdiemCo sued TV Management
for infringement of U.S. Patents 8, 223, 012, 9, 003, 499,
and 9, 071, 931. See PerdiemCo LLC v. TV Management,
Inc., Nos. 2:15-cv-1217-JRG-RSP, 2:15-cv-1216-JRG-RSP
(Lead Case). TV Management responded by filing petitions for
IPR requesting review of each asserted claim. Eventually the
parties settled that litigation, and the Court dismissed the
case with prejudice last November.
long after the settlement, the Patent Trial and Appeal Board
(PTA B) instituted review of each challenged claim. In March
2017, PerdiemCo filed responses on the merits in the IPR
proceedings for the '012, '499, and '931 patents.
that background in mind, in December 2016, PerdiemCo filed
this lawsuit asserting 115 claims. Compl. [Dkt. # 1].
PerdiemCo claims almost all Defendants infringe the '012,
'499, and '931 patents, and that all Defendants
infringe four newly asserted patents: U.S. Patents 9, 485,
314, 8, 149, 113, 9, 319, 471, and 9, 119, 033. Id.
response, Telular filed eight IPR petitions. Between January
and March 2017, Telular filed seven IPR petitions challenging
the currently asserted claims. Defs.' Motion [Dkt. # 36]
at 3-4. In April 2017, Telular filed another IPR petition
directed to all claims of U.S. Patent 9, 621, 661, which
PerdiemCo has yet to assert. Notice of Suppl. Facts [Dkt. #
49]; see also PerdiemCo's Response [Dkt. # 40]
at 5 n.3 (noting PerdiemCo's intention to add two more
patents to this litigation).
claim these facts warrant a stay because it's highly
likely the PTAB will institute review of all asserted claims
given that (1) the PTAB already instituted review of the
'012, '499, and '931 patents, and (2) the other
four asserted patents are closely related. Defs.' Motion
[Dkt. # 36] at 1-2. Telular notes all seven patents share the
same specification and claim priority to the same original
question of whether to stay proceedings pending inter
partes review of a patent is a matter committed to the
district court's discretion. See Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1426-27 (Fed. Cir. 1988) (request
for stay pending inter partes reexamination). A stay
is particularly justified when “the outcome of a PTO
proceeding is likely to assist the court in determining
patent validity or eliminate the need to try infringement
issues.” Evolutionary Intelligence, LLC v.
Millennial Media, Inc., No. 5:13-cv-04206, 2014 WL
2738501, at *2 (N.D. Cal. June 11, 2014); see also 3rd
Eye Surveillance, LLC v. Stealth Monitoring, Inc., No.
6:14-cv-162, 2015 WL 179000, at *1 (E.D. Tex. Jan. 14, 2015);
Norman IP Holdings, LLC v. TP-Link Techs., Co., No.
6:13-cv-384, 2014 WL 5035718, at *2 (E.D. Tex. Oct. 8, 2014);
see also Gould v. Control Laser Corp., 705 F.2d
1340, 1342 (Fed. Cir. 1983).
courts typically consider three factors when determining
whether to grant a stay pending inter partes review:
(1) whether the stay will unduly prejudice the non-moving
party, (2) whether the proceedings before the court have
reached an advanced stage, including whether discovery is
complete and a trial date has been set, and (3) whether the
stay will simplify issues in the litigation. See Lennon
Image Techs., LLC v. Macy's Retail Holdings, Inc.,
Nos. 2:13-cv-235, 2014 WL 4652117, at *2 (E.D. Tex. Sept. 17,
2014); Soverain Software LLC v. Amazon.com, Inc.,
356 F.Supp.2d 660, 662 (E.D. Te x . 2005). Based on those
factors, courts determine whether the benefits of a stay
outweigh the inherent costs of postponing the litigation.
See EchoStar Techs. Corp. v. TiVo, Inc., No.
5:05-cv-81, 2006 WL 2501494 (E.D. Tex. July 14, 2006).
courts have also considered whether a stay will reduce the
burden of litigation on the parties and on the court.
See, e.g., Market-Alerts Pty. Ltd. v. Bloomberg
Finance L.P., 922 F.Supp.2d 486, 489 (D. Del. 2013);
Ultratec, Inc. v. Sorenson Commc'ns,
Inc., No. 13-cv-346, 2013 WL 6044407 (W.D. Wis. Nov.
13, 2013). In this district, courts usually deny motions for
stay when the PTAB has not acted on a petition for inter
partes review. See Trover Group, Inc. v. Dedicated
Micros USA, No. 1:13-CV-1047-WCB, 2015 WL 1069179, at *6
(E.D. Tex. Mar. 11 2015) (“In this district, that is
not just the majority rule; it is the universal