As i posted the Pacer several days ago , initially Judge et the trial date for Oct,20,2016 but today Pacer schedueling it moved to Jan,9,2017. I feel the Judge may already made some decision re accepting the Motion for stay , and thats was the reason for changing the trial date till IPR conclusion In Dec,2016. But still there is some chance by e.DIGITAL to bring the issue of Prejudice& other pending counterclaims defences that even IPR conclusion can not simplify the issues. We should wait for possible this strategy by Handal & obviously the Judge decisionin this regard .Please read following important Paragraphs. JMHO
Unlike district-court litigation, a petitioner for IPR can raise only limited invalidity grounds. Specifically, the statute only permits IPR proceedings based on novelty and obviousness, and even then only permits a subset of the numerous types of sources of invalidating prior art typically available in litigation. 35 USC § 311(b) states: "A petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications." Thus, a defendant may raise litigation defences and counterclaims that, by statute, cannot be addressed in the IPR. If so, courts may highlight this fact in denying a stay, reasoning that the IPR cannot sufficiently simplify the issues.
For example, in Procter & Gamble, the Southern District of Ohio noted that "defendants have asserted many defences that the [USPTO] will not review, including invalidity under 35 USC § 112, estoppel, laches, and res judicata," reasoning that because the IPR could not address these defences, "their presence demonstrates further that significant issues remain for this Court to address regardless of the outcome of the IPRs." Other courts have similarly found that pleading defences not available in an IPR counselled against a stay, for example Rensselaer (invalidity claimunder 35 USC § 112),Endotach (35 USC § 112 invalidity claims), TruePosition (defences under 35 USC § 112 in denying stay), and Davol (validity issues under 35 USC § 112 and equitable defences).
But pending counterclaims against the plaintiff frequently result in the denial of a stay request based on an IPR. Nutraceuticals v Cyanotech Corp (MD Fla, October 15 2013) stated: "Theinter partes review proceeding will have no bearing on Defendants' counterclaims, such as for unfair competition." Other courts have similarly expressed reluctance to order partial stays that would allow a defendant's counterclaims to proceed while halting the plaintiff's claims.
For these reasons, before moving to stay a litigation based on an instituted IPR, a defendant should reassess any pending counterclaims and defences to weigh their chances of success against the importance of a stay. If, for example, the counterclaims are unlikely to prevail and the defences based on novelty and obviousness appear the strongest, the defendant may want to withdraw the counterclaims and other defences to maximize the chance of a stay.
