United States District Court, D. Delaware
MEMORANDUM OPINION AND ORDER
WILLIAM C. BRYSON UNITED STATES CIRCUIT JUDGE.
the Court is a motion by defendants IAC/InterActiveCorp and
Vimeo, Inc., (collectively, “the Vimeo
defendants”) to stay the action in which plaintiff
British Telecommunications PLC (“British
Telecom”) has accused them of infringing claims 1 and
3–12 of U.S. Patent No. 7, 974, 200 (“the
’200 patent”). Dkt. No. 125.
August 27, 2019, the Patent Trial and Appeal Board
(“PTAB”) instituted inter partes review
(“IPR”) of claims 1–7 and 10–12 of
the ’200 patent. The Vimeo defendants have asked the
Court to stay the action against them until the conclusion of
that inter partes review proceeding, including any
appeals. The Court will GRANT the request for a stay, but
only until the completion of the proceedings before the PTAB.
It is not necessary at this point to decide whether the stay
should be extended beyond that date.
March 8, 2018, British Telecom filed a complaint alleging
that Vimeo and several other parties (referred to as the
“Match defendants”) infringed six patents owned
by the British Telecom, including the ’200 patent. On
February 4, 2019, the Court granted the defendants’
motions to dismiss with respect to four of the patents at
issue: U.S. Patent Nos. 6, 240, 450; 6, 397, 040; 6, 578,
079; and 9, 177, 297. See Dkt. No. 61. The Court
subsequently issued an order severing the case against the
Match defendants from the case against the Vimeo defendants
for purposes of trial, but continuing to treat the cases as
consolidated for purposes of pretrial proceedings. Dkt. No.
96. At the same time, the Court granted British
Telecom’s motion to sever Count II of the first amended
complaint and to enter final judgment on that claim so that
British Telecom could take an immediate appeal from the
disposition of that claim, which involved U.S. Patent No. 6,
397, 040. Dkt. No. 97; see Dkt. No. 98. British
Telecom noticed an appeal from the dismissal of that claim,
Dkt. No. 104, and that appeal is now pending before the
Federal Circuit as No. 19-1917 (Fed. Cir. docketed May 24,
the parties in the Vimeo case have served preliminary
infringement and invalidity contentions, completed initial
document production, and filed claim construction briefs,
much of the pretrial process remains undone. Document
discovery and fact discovery has not closed; no
interrogatories have been responded to; no depositions have
been taken; expert reports have not been submitted; and
dispositive motions have not been filed. Trial is not
scheduled to begin until an as-yet-unspecified date in
March 22, 2019, the Vimeo defendants filed a petition seeking
inter partes review of claims 1–7 and
10–12 of the ’200 patent. The Vimeo defendants
contend that they did not seek inter partes review
of asserted claims 8 and 9 because their position is that
those claims are indefinite, and inter partes review
is not available to adjudicate claims of indefiniteness. Dkt.
No. 126, at 3. In its institution decision, the PTAB found
that it was likely that claims 1–3, 5–7, and
10–12 would be found invalid. Vimeo, Inc. v.
British Telecomm. PLC, No. IPR2019-00833, 2019 WL
4050160, at *18 (P.T.A.B. Aug. 27, 2019). A decision in the
inter partes review proceeding is expected within
one year of the date of institution (i.e., by late August
after the institution of the inter partes review
proceeding, the Vimeo defendants filed this motion to stay
the proceedings in the district court pending the resolution
of the inter partes review.
question whether a stay of district court proceedings should
be granted when inter partes review is instituted on
some or all the claims at issue in the district court
litigation has arisen frequently since the enactment of the
Leahy-Smith America Invents Act (“AIA”) in 2011.
The principles governing the answer to that question have
been developed by courts in numerous decisions since then.
district court has inherent power to control its own docket,
including the power to stay the proceedings before it.
See Clinton v. Jones, 520 U.S. 681, 706 (1997);
Landis v. N. Am. Co., 299 U.S. 248, 254–55
(1936). In particular, the question whether to stay
proceedings pending review by the Patent and Trademark Office
(“PTO”) of the validity of the patent or patents
at issue in the lawsuit is a matter committed to the district
court’s discretion. See Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1426–27 (Fed. Cir. 1988). 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.” NFC Tech. LLC v. HTC Am., Inc., No.
2:13-cv-1058, 2015 WL 1069111, at *1 (E.D. Tex. Mar. 11,
2015) (citing cases).
courts typically consider three factors when determining
whether to grant a stay pending inter partes review
of the patent in suit: “(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.”
Princeton Dig. Image Corp. v. Konami Dig. Entm’t
Inc., No. CV 12-1461, 2014 WL 3819458, at *2 (D. Del.
Jan. 15, 2014) (citing cases); St. Clair Intellectual
Property v. Sony Corp., 2003 WL 25283239, at *1 (D. Del.
Jan. 30, 2003).
related context of Covered Business Methods
(“CBM”) review proceedings provides guidance as
to the principles that apply to stay applications in the IPR
setting. In the uncodified portion of the AIA that was
directed to CBM review proceedings, Congress set forth four
factors that govern whether a stay should be granted pending
CBM review proceedings before the PTAB. Those four factors
(A) whether a stay, or the denial thereof, will simplify the
issues in question and streamline the trial;
(B) whether discovery is complete and whether a trial date
has been set;
(C) whether a stay, or the denial thereof, would unduly
prejudice the nonmoving party or present a clear tactical
advantage for the moving party; and
(D) whether a stay, or the denial thereof, will reduce the
burden of litigation on the parties and on the court.
Pub. L. No. 112-29, § 18(b)(1), 125 Stat. 284, 331
(2011). Those statutory factors largely track the three
factors traditionally used by courts in determining whether
to grant stays pending post-grant review proceedings, with a
fourth factor added. The fourth factor, which requires an
inquiry into whether a stay will reduce the burden of
litigation on the parties and the court, ...