United States District Court, M.D. Florida, Tampa Division
VIRGINIA M. HERNANDEZ COVINGTON UNITED STATES DISTRICT JUDGE.
matter is before the Court on consideration of Defendant
Vanguard Products Group, Inc.'s Motion to Stay the Case
Pending Resolution of the Inter Partes Review (Doc. # 58),
filed on June 18, 2019. Plaintiff InVue Security Products
Inc. responded on July 2, 2019. (Doc. # 81). For the reasons
that follow, the Motion is denied.
initiated this action in this Court on October 16, 2018,
alleging Vanguard's products infringe eight different
patents owned by InVue. (Doc. # 1). Vanguard filed its Answer
to the Complaint on November 16, 2018. (Doc. # 21).
concedes that six of the eight patents are valid and admits
infringement as to those patents. (Doc. # 58 at 1). But
Vanguard maintains that the other two patents at issue are
that reason, Vanguard filed two petitions for inter partes
review with the U.S. Patent Trial and Appeal Board (PTAB)
regarding the two contested patents on June 18, 2019. (Doc. #
58-1). As far as the Court is aware, the PTAB has not yet
determined whether it should grant the inter partes review
petitions and institute a review of the two contested
moves for a stay of the case pending resolution of the inter
partes review of the two patents still at issue. (Doc. # 58).
InVue has responded (Doc. # 81), and the Motion is ripe for
district court has “broad discretion to stay
proceedings as an incident to its power to control its own
docket.” Clinton v. Jones, 520 U.S. 681, 706
(1997)(citing Landis v. N. Am. Co., 299 U.S. 248,
254 (1936)). Deciding whether to stay a case “calls for
the exercise of judgment, which must weigh competing
interests and maintain an even balance.” Landis, 299
U.S. at 254-55. “The party seeking a stay bears the
burden of showing that such a course is appropriate.”
Patent Asset Licensing, LLC v. Bright House Networks,
LLC, No. 3:15-cv-742-J-32MCR, 2016 WL 4431574, at *2
(M.D. Fla. Aug. 22, 2016).
Vanguard bases its request for a stay on the pending inter
partes review process. (Doc. # 58). “Under the
[Leahy-Smith America Invents Act], [inter partes review]
presents ‘a new system for reviewing issued patents,
providing for stays of district court proceedings, and
estoppels in tribunals, based on' expedited decisions of
the Patent and Trademark Office.” Lighting Sci.
Grp. Corp. v. Nicor, Inc., No. 6:16-cv-1087-Orl-37GJK,
2017 WL 3706697, at *2 (M.D. Fla. May 9, 2017)(citation
patent cases, a number of courts have reasoned that such
stays should be liberally granted when there is a pending
administrative proceeding before the [Patent and Trademark
Office].” Automatic Mfg. Sys., Inc. v. Primera
Tech., Inc., No. 6:12-cv-1727-Orl-37, 2013 WL 6133763,
at *1 (M.D. Fla. Nov. 21, 2013) . The Court considers three
factors in deciding whether to stay a patent case pending
inter partes review, including: “(1) whether a stay
would unduly prejudice or present a clear tactical
disadvantage to the non-moving party; (2) whether a stay will
simplify the issues in question and trial of the case; and
(3) whether discovery is complete and whether a trial date
has been set.” Patent Asset Licensing, LLC, 2016 WL
4431574, at *2. “Prejudice against the non-movant is
probably the most important factor to consider when
determining whether a stay is appropriate.” Puget
BioVentures, LLC v. Med. Device Bus. Servs., Inc., No.
3:17-CV-503-JD-MGG, 2017 WL 6947786, at *2 (N.D. Ind. Sept.
the first factor, InVue argues that it “will be unduly
prejudiced . . . because [a stay] will indefinitely delay
discovery, delay an award of damages as to the six
Unchallenged Patents for which Vanguard has admitted
liability, and delay injunctive relief to InVue in a suit
between parties who are direct competitors.” (Doc. # 81
at 7-8). Vanguard contends, however, that neither party will
be unduly prejudiced by staying the case even if there is a
delay caused by the inter partes review. (Doc. # 58 at
14-15). It insists that any concerns about delay are tempered
by the speed at which the PTAB is statutorily required to
conduct the inter partes review process. (Id.).
Court has held that “such delay is outweighed by the
many advantages of inter partes review.” Andersons,
Inc. v.Enviro Granulation, LLC, No.
8:13-cv-3004-T-33MAP, 2014 WL 4059886, at *2 (M.D. Fla. Aug.
14, 2014). This Court has also recognized that “delay
in litigation, without more, generally does not demonstrate
undue prejudice.” Id. (quoting Cascades
Comput. Innovation, LLC v. SK Hynix, Inc., No.
11-4356, 2012 WL 2086469, at *1 (N.D. Ill. May 25, 2012)).
Still, a party may be prejudiced when it has other claims
pending that do not depend on the validity of the patent
involved in the ...