• U.S. District Court of Delaware
  • D66283


McRo Inc. v. Bethesda Softworks LLC, DeFAX Case No. D66283 (D. Del. May 1, 2014) Burke, M.J. (9 pages).

Denial of motion for stay of patent infringement proceedings allowed the parties to conduct at least some discovery and clarify issues for trial. Magistrate judge recommended that motion for stay be denied, without prejudice.

Plaintiff originally filed 13 cases in the U.S. District Court for Delaware alleging patent infringement claims against each of the defendants. Eight of those actions were later transferred to the U.S. District Court for the Central District of California. A defendant in one of the Central District cases filed two petitions for inter partes review with the patent trial and appeal board of the U.S. Patent and Trademark Office. Those petitions involved the patents-in-suit in the remaining Delaware cases.

Defendants in the five remaining cases jointly moved for a stay of proceedings pending the outcome of the inter partes review in the PTO, or until issuance of a claim construction order in the Central District actions, whichever was later. Defendants asserted both those events were likely to occur by July 14, 2014.

The court held that allowing a stay until the issuance of the Central District's claim construction order was not likely to be beneficial; however, the court indicated it would benefit from being able to review the Central District's claim construction order before proceeding with claim construction in this case.

With regard to whether it should grant a stay until the PTO rendered its decision on whether to institute inter partes review proceedings, the court determined a stay was not appropriate at this juncture. Discovery had only just begun in the five remaining Delaware cases. Even if the PTO went forward with inter partes review proceedings, doing initial discovery in the meantime was not unduly harmful to the efficient management of these proceedings in Delaware. If the court were to grant a stay at a later stage, the amount of case-related activity that would have occurred in the meantime did not amount to a large-scale waste of resources.

Both sides asserted in their briefing that the court should be cognizant of the Central District actions and how they affected these cases. The court noted that the Central District had declined to stay those actions and had permitted at least some discovery to go forward.

The court stated that denying the motion for a stay would allow the court to obtain a more clear record regarding what patent claims were likely be in dispute in the instant cases, and which claims and defenses were likely to be pressed in earnest by the parties. The court expected that allowing some discovery to proceed would serve in providing clarity on these issues and thereby simplifying matters for trial.

The magistrate judge recommended denying defendants' motion for a stay, with leave to renew the motion after the PTO made a determination on whether to initiate inter partes review proceedings.