United States District Court, D. Delaware
NEXANS INC. and BERK-TEK LLC, Plaintiffs,
BELDEN INC., BELDEN TECHNOLOGIES, INC. and BELDEN TECHNOLOGIES, LLC, Defendants.
REPORT AND RECOMMENDATION
SHERRY R. FALLON, Magistrate Judge.
Presently pending before the court in this patent infringement action is the motion to stay pending completion of inter parts reviews ("IPRs") of plaintiffs Nexans Inc. and Berk-Tek LLC (together, "plaintiffs"). (D.I. 47) By way of their motion, plaintiffs request that the court stay the present action pending the United States Patent and Trademark Office's ("PTO") determination regarding the validity of United States Patent Nos. 6, 074, 503 ("the '503 patent"), 7, 135, 641 ("the '641 patent"), 7, 977, 575 ("the '575 patent"), and 7, 663, 061 ("the '061 patent") (collectively, "the Belden patents"). For the following reasons, I recommend that the court deny plaintiffs' motion to stay without prejudice to renew pending completion of IPR.
Plaintiffs and defendants Belden Inc., Belden Technologies, Inc. and Belden Technologies, LLC (collectively, "defendants" or "Belden") are Delaware corporations that use, make, and/or sell data cables. (D.I. 5 at ¶¶ 1-4) On April 3, 2012, defendants sent a letter ("the warning letter") to Berk-Tek LLC ("Berk-Tek"), a division of Nexans Inc. ("Nexans"), accusing Berk-Tek of using defendants' patented technology. ( Id. at ¶¶ 13-14) In the warning letter, defendants also referenced previous litigation against Superior Essex Inc. and Superior Essex Communications LP (collectively, "Superior Essex"), explaining that, at the conclusion of that litigation, Superior Essex elected to enter into a license agreement, including payment of a royalty. ( Id. at ¶ 16)
Following receipt of the warning letter, the parties entered into a Protected Communications and Standstill Agreement ("the Standstill Agreement") on June 25, 2012. ( Id. at ¶ 19) On September 21, 2012 counsel for the parties met in New York City. ( Id at ¶ 20) The parties then kept in contact until the Standstill Agreement expired on October 31, 2012. ( Id. at ¶¶ 21-23)
On November 19, 2012, Nexans filed this declaratory judgment and patent infringement action ("the Delaware action") against defendants. (D.I. 1) The original complaint states claims for declaratory judgment of non-infringement and invalidity of the '503 patent, the '641 patent, and the '575 patent, and affirmatively asserts infringement of United States Patent No. 5, 796, 046 ("the '046 patent"). ( Id. ) On the same date, plaintiffs filed petitions for IPR of the '503 patent, the '641 patent, and the '575 patent.
On November 21, 2012, two days after Nexans commenced the instant litigation, defendants filed a parallel suit against Nexans in the Southern District of Indiana ("the Indiana action"), alleging infringement of the same three Belden patents asserted in the Delaware action, as well as the '061 patent. (D.I. 13 at 2) On the same day, defendants filed a separate action against Hitachi Cable America Inc. and Hitachi Cable Manchester, Inc. in the Southern District of Indiana, which also alleged infringement of the Belden patents ("the Hitachi litigation"). ( Id. )
In an amended complaint filed on December 3, 2012, Nexans added claims for declaratory judgment of non-infringement and invalidity of the '061 patent. (D.I. 5) On the same date, plaintiffs filed a petition for IPR of the '061 patent. (D.I. 48 at 3-4) All four petitions for IPR were granted before June of 2013. ( Id. )
On August 6, 2013, this court issued a decision denying defendants' motion to dismiss for lack of subject matter jurisdiction, denying defendants' motion to dismiss the declaratory judgment claims, and granting plaintiffs' motion to enjoin defendants from prosecuting the related Indiana action. (D.I. 42) Currently before the court is plaintiffs' motion to stay pending completion of IPRs. (D.I. 47)
III. LEGAL STANDARD
Motions to stay invoke the broad discretionary powers of the court. Dentsply Int'l, Inc. v. Kerr Mfg. Co., 734 F.Supp. 656, 658 (D. Del. 1990) (citing Bechtel Corp. v. Laborers' Int'l Union, 544 F.2d 1207, 1215 (3d Cir. 1976)). In exercising its discretion on a motion to stay, the court generally considers three factors: "(1) whether the granting of a stay would cause the nonmoving party to suffer undue prejudice from any delay or allow the moving party to gain a clear tactical advantage over the non-moving party; (2) whether a stay will simplify the issues for trial; and (3) whether discovery is complete and a trial date set." Cephalon, Inc. v. Impax Labs., Inc., C.A. No. 11-1153-SLR, 2012 WL 3867568, at *2 (D. Del. Sept. 6, 2012) (quoting Enhanced Sec. Research, LLC v. Cisco Sys., Inc., C.A. No. 09-571-JJF, 2010 WL 2573925, at *3 (D. Del. June 25, 2010)).
Application of these factors to cases involving IPR proceedings requires consideration of recent changes in the law under the America Invents Act ("AIA"). Specifically, Congress mandated that the United States Patent and Trademark Office (the "PTO") may now only grant IPR proceedings if it believes there is a "reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition." Leahy-Smith America Invents Act, Pub. L. No. 112-29, § 314(a), 125 Stat 284 (Sept. 16, 2011). Under the new IPR procedures, the PTO must decide whether to grant review within six months of a petition being filed, and must complete its review and issue a final determination within ...