United States District Court, D. Delaware
CHRISTOPHER J. BURKE, UNITED STATES MAGISTRATE JUDGE
Wilmington, Delaware this 26th day of February,
November 13, 2017, Plaintiff Elm 3DS Innovations, LLC
("Plaintiff') filed a motion seeking to lift the
stay in these three cases (the "Motion"). (D.I.
160; D.I. 136, Civil Action No. 14-1431-LPS-CJB; D.I. 163,
Civil Action No. 14-1432-LPS-CJB) The stay was in place
"pending further proceedings before the [United States
Patent and Trademark Office's] Patent Trial and Appeal
Board" in light of then-pending inter partes
review ("IPR") proceedings concerning all but one
of the 13 patents-in-suit in this case. (Oral Order, October
12, 2016) Defendants Samsung Electronics Co., Ltd., Samsung
Semiconductor, Inc., Samsung Electronics America, Inc.,
Samsung Austin Semiconductor, LLC, Micron Technology, Inc.,
Micron Semiconductor Products, Inc., Micron Consumer Products
Group, Inc., SK hynix Inc., SK hynix America Inc., Hynix
Semiconductor Manufacturing America, Inc., and SK hynix
Memory Solutions Inc. ("Defendants") oppose the
Motion. (D.I. 164 at 1) The Motion was fully briefed as of
December 11, 2017, (D.I. 166), and was argued telephonically
on February 26, 2018.
court has discretionary authority to grant a motion to stay.
See Cost Bros., Inc. v. Travelers Indem. Co., 760
F.2d 58, 60-61 (3d Cir. 1985). In determining whether a stay
is appropriate in the first instance, our Court typically
considers three factors: (1) whether granting the stay will
simplify the issues for trial; (2) the status of the
litigation, particularly whether discovery is complete and a
trial date has been set; and (3) whether a stay would cause
the non-movant to suffer undue prejudice from any delay, or
allow the movant to gain a clear tactical advantage. See,
e.g., Princeton Dig. Image Corp. v. Konami Dig. Entm 't
Inc., Civil Action Nos. 12-1461-LPS-CJB, 13-335-LPS-CJB,
2015 WL 219019, at *2 (D. Del. Jan. 14, 2015).
"When a court has imposed a stay, but 'circumstances
have changed such that the court's reasons for imposing
[that] stay no longer exist or are inappropriate, ' the
court also has the inherent power and discretion to lift the
stay." Id. (quoting Auto. Techs. Int'l,
Inc. v. Am. Honda Motor Co., C.A. Nos. 06-187-GMS,
06-391 GMS, 2009 WL 2969566, at *2 (D. Del. Sept. 15, 2009)).
"On the other hand, 'where there are no new
circumstances that impose hardship on the plaintiff or that
change the court's earlier disposition imposing the stay,
the plaintiffs motion to lift the stay should be
denied.'" Id. (quoting Auto. Techs.
Int'l, Inc., 2009 WL 2969566, at *2).
Here, circumstances have changed from the time of the
Court's prior decision to stay this matter. Most
significantly, the PTAB has issued Final Written Decisions as
to proceedings regarding the claims of 11 of the 13
patents-in-suit; in each of those decisions, the PTAB
rejected all of Defendants' unpatentability arguments.
(D.I. 161 at 2) As to a 12th patent-in-suit, United States
Patent No. 8, 791, 581 (the "'581 patent"), the
PTAB has determined not to institute review at all.
(Id.) And with regard to the 13th patent-in-suit,
the PTAB found that the two remaining asserted claims were
unpatentable. (Id.) The Final Written Decisions
regarding the claims of the 11 patents-in-suit that the PTAB
found not unpatentable are currently on appeal to the United
States Court of Appeals for the Federal Circuit; Defendants
now ask that the Court continue the stay pending resolution
of that appeal. (D.I. 164 at 1-2, 19; D.I. 166 at 1)
Plaintiff notes, no matter what happens with the pending
appeal, the case will certainly go forward unaffected as to
one of the patents-in-suit: the '581 patent, which is not
the subject of appellate review. (D.I. 166 at 1)
even as to the 11 patents-in-suit that are the subject of the
appeal, the case for a stay no longer makes good sense on
simplification grounds, in light of what we now know. As
compared to when the stay was issued-at a time when the PTAB
had found a "reasonable likelihood" that the claims
of these 11 patents would be found unpatentable-now the best
data point we have from the PTAB suggests that these claims
will survive. While the parties differ on the appropriate
metric to look to, all sides agree that the odds of any
individual PTAB IPR decision being overturned or vacated by
the Federal Circuit on appeal are no greater than 25 percent.
(D.I. 161 at 8; D.I. 164 at 15; D.I. 166 at 3) And while it
is of course possible that the Federal Circuit will come to a
different conclusion than did the PTAB, the "mere
possibility (as opposed to 'reasonable
likelihood') that the asserted claims could be
invalidated [after an] appeal and [that this would] result in
simplification is too speculative to be given much
weight." Network-1 Sec. Sols., Inc. v.
Alcatel-Lucent USA Inc., No. 6;llCV492, 2015 WL
11439060, at *3 (E.D. Tex. Jan. 5, 2015) (emphasis in
original); see also Zoll Med. Corp. v. Respironics,
Inc., C.A. No. 12-1778-LPS, 2015 WL 4126741, at *1 (D.
Del. July 8, 2015).
Court understands that there are scenarios in which, if the
Court lifts the stay now and the Federal Circuit does end up
vacating or reversing some portion or all of the PTAB's
decisions, that might complicate matters in this case.
(See D.I. 164 at 14) But those are complications
that (if they come to pass) Defendants will have to live
with, having taken their best shot at the PTAB and lost.
regard to the issue of undue prejudice, Plaintiff has already
suffered from delay in its ability to have it allegations of
patent infringement adjudicated in this Court. While it is
true that the parties are not competitors, (D.I. 164 at
16-17), continuing the stay in favor of an appeal here
(especially where the decisions being appealed favor
Plaintiff) would cause Plaintiff some real prejudice. Were
the stay to continue through the resolution of the appeal,
the parties agree that it is likely that it would not be
lifted until late 2018 at the earliest. (D.I. 161 at 7; D.I.
164 at 2-3; D.I. 166 at 6) For a Plaintiff who filed this
suit over three years ago, and who saw nearly all of its
claims emerge unscathed in the PTAB, that is a long time to
be asked to continue to wait. See Zoll Med. Corp.,
2015 WL 4126741, at *1.
delay Plaintiff has already faced has also occasioned other
real-world consequences, in terms of Plaintiff s ability to
present certain evidence at trial. During the pendency of the
stay, the sole inventor on the patents-in-suit, Glenn Leedy,
unexpectedly passed away. (D.I. 161 at 3) While it is hard to
know if further delay would cause additional harm to
Plaintiffs case, it should not have to run that risk under
Court recognizes that the Federal Circuit's decision on
the pending appeal- particularly its view of the proper claim
construction for the disputed term "substantially
flexible"-will have import in this case. (D.I. 164 at 7,
11) The parties, in preparing a proposed Scheduling Order,
can work to take into account the likely timing of a Federal
Circuit appellate decision when fashioning their request for
a Markman hearing date. Cf. Zoll Med.
Corp., 2015 WL 4126741, at *1 n.3; see also
(D.I. 166 at 5).
Motion is thus GRANTED.