United States District Court, D. Delaware
R. Fallon Judge.
before the court in this patent infringement action is the
motion to stay pending the resolution of two petitions for
inter partes review ("IPR") filed by
defendants Samsung Electronics Co., Ltd. and Samsung Austin
Semiconductor, LLC (collectively,
"Samsung").(D.I. 36) For the following reasons,
Samsung's motion to stay is denied without prejudice.
September 28, 2017, plaintiff Invensas Corporation
("Invensas") filed a complaint against Samsung
asserting infringement of United States Patent Numbers 6,
232, 231 ("the '231 patent") and 6, 849, 946
("the '946 patent") (collectively, the
"patents-in-suit"). (D.I. 1)
Invensas is the owner by assignment of the patents-in-suit.
(Id. at ¶¶ 9-10) The patents-in-suit are
entitled "Planarized Semiconductor Interconnect
Topography and Method For Polishing a Metal Layer To Form
Interconnect," and issued on May 15, 2001.
(Id.) The patents-in-suit share a common
specification and are directed to planarizing or flattening
the surface of an "interconnect topography" in an
integrated circuit. ('231 patent, col. 1:8-14)
January 29, 2018, the court entered a scheduling order,
setting a fact discovery cutoff of February 1, 2019, an
expert discovery cutoff of May 10, 2019, and a trial date of
November 18, 2019. (D.I. 14) On February 20, 2018, the court
entered a discovery stipulation permitting cross-use by the
parties of all written discovery responses, document
productions, and deposition testimony from a parallel action
in the Eastern District of Texas, captioned Invensas
Corp. v. Samsung Electronics Co., Ltd. & Samsung
Electronics America, Inc., C.A. No. 2:17-cv-670-RWS-RSP
(E.D. Tex.) (the "Texas Action"). (D.I. 21) A
Markman hearing was held in the Texas Action on
August 22, 2018, and the deadline for completion of document
production in the Texas Action passed on June 28, 2018. (D.I.
40, Ex. 6 at 3-4)
13, 2018, Samsung filed petitions for IPR challenging the
validity of all asserted claims of the patents-in-suit with
the U.S. Patent and Trademark Office ("USPTO").
(D.I. 40, Exs. 13-14) The Patent Trial and Appeal Board
("PTAB") will release its institution decisions
regarding Samsung's IPR petitions in February 2019. 77
Fed. Reg. 48, 756, 48, 757 (Aug. 14, 2012). If the PTAB
institutes proceedings on Samsung's petitions, final
decisions on the merits of the petitions will issue by
February 2020. 35 U.S.C. §§ 316(a)(l 1), 326(a)(l
March and July 2017, the PTAB declined to institute IPR
proceedings for the patents-in-suit based on petitions filed
by Broadcom Limited. (D.I. 40, Exs. 9-10) The Broadcom
petitions relied on different prior art combinations not
cited in Samsung's petitions, although they relied on the
same primary reference. (Id., Exs. 11-14) Following
the PTAB's rejection of Broadcom's IPR petitions
regarding the patents-in-suit, the U.S. International Trade
Commission ("ITC") issued a decision on June 30,
2017 finding the '946 patent valid over the same primary
references relied upon by Samsung in its IPR petitions, and
infringed by over 2, 100 semiconductor devices. (D.I. 40, Ex.
has discretionary authority to grant a motion to stay.
454 Life Scis. Corp. v. Ion Torrent Sys., Inc., C.A.
No. 15-595-LPS, 2016 WL 6594083, at *2 (D. Del. Nov. 7, 2016)
(citing Cost Bros., Inc. v. Travelers Indem. Co.,
760 F.2d 58, 60 (3d Cir. 1985)). Courts consider three
factors in deciding how to exercise this discretion: (1)
whether a 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. Id. (citing Advanced Microscopy Inc.
v. Carl Zeiss Microscopy LLC, C.A. No. 15-516-LPS-CJB,
2016 WL 558615, at *1 (D.Del. Feb. 11, 2016)).
considering the three stay-related factors, the court denies
Samsung's motion to stay, without prejudice to renew the
motion if and when the IPR petitions are instituted.
Simplification of Issues for Trial
support of its motion to stay, Samsung alleges that the PTAB
is likely to institute proceedings,  and the IPR proceedings will
narrow the issues remaining for trial as asserted claims are
cancelled, narrowed, or invalidated. (D.I. 37 at 12-13)
Samsung contends that, even if the PTAB affirms the
patentability of the claims, Samsung will be estopped from
arguing that those claims are invalid in the present
litigation. (Id. at 13-14) Accordingly, Samsung
argues that a ...