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.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
