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4 Out of 5 IPRs Ain’t Bad: Judge Oetken Grants Motion to Stay Pending Resolution of IPR Proceedings Despite Advanced Stage of Litigation

On October 27, 2016, District Judge J. Paul Oetken (S.D.N.Y.) granted defendant Comcast Corp.'s ("Comcast") motion to stay the case pending resolution of inter partes review ("IPR") proceedings instituted by the Patent Trial and Appeal Board ("PTAB").

From November 2016 through March 2017, Comcast filed forty-five IPR petitions with the PTAB challenging all claims of the five patents-in-suit asserted by Rovi. Between May and September 2017, the PTAB instituted IPR proceedings as to four of the five patents. On September 15, 2017, Comcast moved to stay the entire case pending resolution of the IPR proceedings.

The court applied a common three-factor test to determine whether a stay is appropriate. First, the court determined that the potential of the IPRs to simplify the issues in the case weighs strongly in favor of a stay. The court noted that four of the five asserted patents are subject to IPR and that the PTAB had granted multiple petitions on two of the patents. The court also determined that regardless of the outcome of the IPRs—patent claims either being canceled or surviving and receiving the benefit of estoppel against future validity challenges—the claims at issue will be simplified. Second, the court determined that the advanced stage of litigation weighs strongly against a stay because "fact discovery is closed, the Court has issued a Markman order, expert reports have been served, [and] the parties are in the midst of taking expert depositions." The court noted that granting a stay at this advanced stage is not common, but explained that the time and effort spent on discovery to this point is a sunk cost, and voluminous summary judgment and Daubert briefing, motions in limine, and trial still remain ahead. Third, the court determined that a stay will not unduly prejudice Rovi, noting that mere delay in the litigation does not establish undue prejudice, and that Comcast and Rovi are not primarily marketplace competitors.

Case:  Rovi Guides, Inc. v. Comcast Corp., No. 1:16-cv-09278-JPO, Dkt. No. 365 (S.D.N.Y. Oct. 27, 2017).