769601, at *4 (D. Del. Mar. 9, 2012) (citation omitted). After considering the parties' positions as set forth in their papers, as well as the applicable law, the court concludes that a stay is warranted here. The plaintiff
unlikely to suffer undue prejudice as a result
the issues before the court will be simplified should the Patent Trial and Appeal Board ( PTAB ) grant the defendants
and the case is at a very early stage currently.
Accordingly, the court grants defendants' motion. IT
HEREBY ORDERED THAT the defendants' Motion to Stay Litigation Pending
Review (D.I. 46) is GRANTED.
The court weighs a variety
determining whether there
undue prejudice: the timing
the request for reexamination, the timing
the request for stay, the status
the reexamination proceedings, and the relationship
Boston Scientific Corp.
Supp. 2d 783, 789 (D. Del. 2011). The mere potential for delay does not in itself establish undue prejudice.
See e.g. Body Media Inc.
Basis Sci. Inc.
No. 12-CV-133 (GMS), 2013 U.S. Dist. LEXIS 82830, at
(D. Del. Jun. 6, 2013). After considering these three factors, the court concludes that there is no evidence at all
undue prejudice. Regarding the timing
the request for reexamination, the defendants filed their IPR petitions on January 30, 2014. (D.I. 47 at 12.) This
well within the one-year timeframe that the statute provides.
315(b). The timing
the request for stay suggests no dilatory motive; the defendants filed the motion to stay less than two weeks after filing their IPR petitions. (D.I. 46.) The Patent Trial and Appeal Board ( PTAB ) has yet to indicate whether it will grant the defendants petitions, but this
not dispositive. The relationship
the parties favors granting a stay here since Canatelo is a non-practicing entity and, by its own admission, does not compete with the defendants. (D.I. 47 at 13; D.I. 52 at 10-11.) The PT
has not yet granted the defendants' petitions, but statistics indicate that it is very likely the PT
will grant the IPR petitions. (D.I. 48, Ex.
In their IPR petitions, the defendants present new prior art that they allege discloses every element
the patents-in-suits' claims and that was not considered during prosecution
the patents-in-suit. (D.I. 47 at 6-10.) Should the PTAB deem the patents-in-suit unpatentable or narrow their scope, the court's resources will be conserved by expending fewer resources on claim construction or avoiding the claim construction process altogether.
See Bear Creek
2013 WL 3789471 at
n.8. Should the claims survive the IPR process, the court will still benefit from the PTAB's expertise.
See Neste Oil
Dynamic Fuels LLC
1744-GMS, 2013 U.S. Dist. LEXIS 92416, at *12 (D. Del. Jul. 2, 2013);
Gioello Enters. Ltd.
375--GMS, 2001 WL 125340, at
(D. Del. Jan. 29, 2001).
considering the stage
litigation, the court asks whether discovery
complete and whether a trial date has been set.
First Am. Title
No. 10-363-GMS, 2012 U.S. Dist. LEXIS 31508, at
(D. Del. Mar. 9, 2012). Staying a case
its early stages advances judicial efficiency and prevents the court and the parties from expending resources on claims that may be rendered invalid.
See SenoRx Inc.
No. 12-173-LPSCJB, 2013 U.S. Dist. LEXIS 8044, at *15-16 (D. Del. Jan.
2013). Here, the parties have yet to conduct any discovery and no scheduling order has been entered. (D.I. 47 at 13-14.)