Scott Daniels | March 13, 2013
Initially, at least, trial judges appear to favor staying infringement actions to allow the Patent Office to resolve the prior art validity issues in the new AIA inter partes review proceedings. In earlier practice with reexamination, trial judges were often reluctant to stay an infringement case where the parties directly compete, i.e., where the patentee is at greater risk of suffering irreparable harm from a stay. With the shorter pendency promised by inter partes review, judges might be less concerned with the possibility of such prejudice.
That is certainly true for Judge Steven Merryday of the Middle District of Florida who on Monday stayed Capriola Corp et al. v. LaRose Indus. et al., (8:12-cv-2346), pending completion of an inter partes review requested by the accused infringer at the end of January. Judge Merryday acknowledged the fact that the parties are direct competitors for the patented product, but characterized the parties’ assertions on this and other points as “the usual array of accusations and counter-accusations.” He pointedly noted “the statutory arrangement [for inter partes review] promis[ing] an expeditious response from [the] PTO,” reasoning that “if the PTO declines inter partes review, little time is lost, but if [the] PTO grants inter partes review, the promise is greater for an important contribution by the PTO to resolution of the governing issues in the litigation.”
Of course, a further motivation for Judge Merryday to stay the action might be that it “promises an abundance of venom and the attendant delay and expense in all events,” certainly a circumstance in which anyone would want to defer to the PTO’s expertise.
An interesting aside for IPR practitioners is that the accused infringer filed two requests against a single patent. One request addresses the claims as the patentee construes them, the other request does so in the manner that the accused infringer believes that the claims should be understood. The page limit is sidestepped, but with “the attendant delay and expense,” as Judge Merryday might put it.