United States District Court, W.D. Missouri, St. Joseph Division
PROVISUR TECHNOLOGIES, INC. Plaintiff,
WEBER, INC., et al., Defendants.
STEPHEN R. BOUGH UNITED STATES DISTRICT JUDGE
the Court is Motion to Stay All Proceedings Pending Inter
Partes Review. (Doc. #36). The motion is granted in
part. The Court finds that a balancing of the relevant
factors weighs in favor of a six-month stay or until the
United States Patent and Trademark Office's Patent Trial
and Appeal Board (“PTAB”) issues its initial
decisions whether to institute any or all of the eight
petitions for inter partes review
(“IPR”) that challenge the validity of the U.S.
patents at issue in this litigation, whichever occurs first.
Background and Legal Standard
February 22, 2019, Plaintiff Provisur Technologies, Inc.
filed this patent infringement case against five defendants
asserting seven U.S. patents. On August 9, 2019, Defendant
Weber, Inc. filed eight IPR petitions against every claim of
every patent asserted in this case based on prior art and
arguments not previously considered by the United States
Patent Office. The five defendants now jointly move and ask
the Court to stay this case until the PTAB resolves the IPR
courts have the inherent power to grant a stay pending
IPR.” Masa LLC v. Apple Inc., Case No.
4:15-CV-00889-AGF, 2016 WL 2622395, at *2 (E.D. Mo. May 9,
Proctor & Gamble Co. v. Kraft Foods Glob., Inc.,
549 F.3d 842, 849 (Fed. Cir. 2008)). In deciding whether a
stay should be imposed, courts consider the following
factors: “the impact of inter partes review, to include
whether a stay would simplify the issues in question and
streamline the trial; (2) how far the litigation has
progressed, taking into account whether discovery is complete
and a trial date has been set; and (3) whether a stay would
unduly prejudice or present a clear tactical disadvantage to
the non-moving party.” CANVS Corp. v. United
States, 118 Fed.Cl. 587, 592 (Fed. Cl. 2014) (citations
Impact of IPR Proceedings
parties present to the Court conflicting statistics regarding
the percentage of IPR petitions instituted by the PTAB and
the percentage of instituted claims the PTAB ultimately finds
invalid. Defendants use statistics to argue that IPR
proceedings will either “moot the entire case” or
“[a]t a bare minimum, . . . simplify the case.”
(Doc. #37, p. 16). Plaintiff uses statistics to argue
“there is no compelling evidence that this case will be
affected in any way when the PTAB renders its institution
decisions in February 2020, [and] a stay now would be
inefficient and wasteful.” (Doc. # 38, p. 13).
parties also cite to the Court conflicting case law regarding
the timing of litigation stays due to IPR proceedings.
Defendants cite to the Court cases in which pre-institution
stays were found appropriate (Doc. #37, pp. 16-17), and
Plaintiff cites to the Court cases in which pre-institution
stays were found premature (Doc. #38, p. 9). The timing of
litigation stays due to IPR proceedings is fact specific, and
the Federal Circuit has expressed “no opinion on which
is the better practice.” CANVS Corp., 118
Fed.Cl. at 593-94 (collecting cases) (citing
VirtualAgility Inc. v. Salesforce.com, Inc., 759
F.3d 1307, 1316 (Fed. Cir. 2014)).
case and based on the particular circumstances presented, the
Court finds the IPR proceedings' potential impact is
enough to await at least the PTAB's initial institution
decisions before moving forward. The Court finds this factor
weighs in favor of a temporary six-month stay or until the
PTAB makes its initial decisions whether to institute any or
all of the eight IPR petitions.
case is in its earliest stages with a scheduling order having
recently been entered and Defendants having recently
responded to the first round of discovery requests. The Court
finds this factor weighs in favor of a temporary stay.