When and Why to Stay District Court Proceedings

PTAB lightbulb

Post-Grant Insights is a video series produced by Ropes & Gray that examines the nuances of bringing a patent dispute before the U.S. Patent Trial and Appeal Board.

As soon as a PTAB petition is filed, one ought to file a motion to stay the district court proceedings so that a client isn’t forced to fight battles on both fronts.

Most district courts will require that the PTAB proceeding be instituted before staying proceedings; however, there are some district courts including the Northern District of California that may actually stay the proceeding before institution and that can be a helpful vehicle for a client. 

By staying a district court proceeding, it enables a client who filed the petition to have an expedited proceeding in front of the PTAB to challenge the validity of the asserted patents and, meanwhile, put on hold all the expenditures related to expert discovery at the district court. 

Congress has specifically said that for business method patents that a “heavy thumb” is placed on the scale in favor of a stay in the district court. The idea is that for this particular category of patents, the district court should take advantage of the PTAB and not expend additional resources to pursue its own litigation at the same time. 

To the extent a client has good prior art, the chance of success with the PTAB is high versus possibly a district court because of the training and the background that these folks have in patent proceedings before the patent office. 

The likelihood of success on a stay motion will vary across different district courts and it also varies across time. In the earlier part of post AIA-proceedings, many stay motions are getting granted, which means cases are getting a speedy resolution dealing with the PTAB because the proceedings move along so quickly. 

In short, timing is very important in filing for a stay motion particularly if a client is in a district where the time to trial is relatively short. It’s important to get those petitions filed as soon as possible. These are large substantive petitions requiring quite a bit of work. It’s important to get them filed as soon as possible and immediately file a motion to stay as soon as the petitions are filed. Most important to the court, focus on the argument that the burden on the court would be reduced if the stay is granted.

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