The Eastern District of Texas court determined that the three-factor stay analysis tilted against halting the litigation. The judge emphasized that Wilus would suffer prejudice from a delay in recovering monetary damages, noting the court has repeatedly found such delays to be prejudicial. The court also noted that the case had reached an advanced stage of proceedings.
Wilus sued Samsung, HP Inc., and Askey Computer Corp. over patent infringement claims. Samsung filed inter partes review petitions on all asserted claims for the patents in question, and the Patent Trial and Appeal Board instituted IPRs against all claims asserted against Samsung. Final written decisions in the IPRs are not expected until after the trial in the underlying district court cases.
Samsung argued that it would suffer severe prejudice from defending infringement allegations on patents for which the PTAB had found “persuasive evidence that the Office erred in a manner material to the patentability of the challenged claims.”
Judge Gilstrap rejected this argument, noting that a finding of “persuasive evidence” of Office errors does not mean the Office has found such errors, nor does it render the outcome of the IPRs foregone conclusions.
The court also found that Wilus would be prejudiced by a stay because it only seeks damages. The judge cited precedent stating that “this Court has repeatedly found that a delay in recovering monetary damages is far from non-prejudicial and is entitled to weight under this factor.” Wilus would also be prejudiced by waiting for PTAB decisions and potential appeals that will not issue until after the current trial date.
Regarding the stage of proceedings, Samsung filed its motion prior to any claim construction briefing, though discovery was near completion at that time. Since then, the parties have completed discovery, briefed and argued claim construction, filed Daubert motions, and filed dispositive motions. The court determined that the case had progressed to an advanced stage, which counsels against a stay.
On the issue of simplification, the court found Samsung’s belief that a stay would simplify issues turned on assumptions about what the PTAB was likely to do. The court noted that judges in this district are “reluctant to rely upon” mere “assumptions” regarding what the PTAB is “likely” to do, and that institution decisions are not as useful as they were in the past for indicating whether claims will be found unpatentable.
The court concluded that the factors did not support Samsung’s requested stay pending IPR and denied the motion.