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Judge Oetken Lifts Stay on 1 of 5 IPR’ed Patents

On April 5, 2018, Judge Oetken (S.D.N.Y.) granted Plaintiff Rovi Guides Inc.’s (“Rovi”) motion to lift a stay related to U.S. Patent No. 8,122,034 (“the ’034 patent”), only one of five patents at issue in a case that was stayed pending completion of inter partes review (“IPR”) proceedings. 

Rovi filed suit against Comcast Corporation (“Comcast”) alleging infringement of five patents, including two patents that are closely related: U.S. Patent Nos. 8,433,696 (“the ‘696 patent”) and the ’034 patent.  The Patent Trial and Appeal Board (“PTAB”) instituted IPRs against four of the five patents but Comcast sought, and received, a stay of the entire case.  Rovi countered the grant of the stay by dismissing with prejudice the ’696 patent, moving to lift the stay for the ’034 patent and having it go forward in a bifurcated case while the remaining patents continue through the IPR process.

The court noted that the dismissal of the ’696 patent had significantly changed the circumstances and reevaluated the stay factors for the ’034 patent. The court held that because the ‘034 claims are not under IPR, a continued stay of the ’034 claims would not simplify the issues at trial.  The court noted that the “stage of litigation” factor had weighed against a stay the first time the court considered Comcast’s motion to stay, and that analysis has not changed.  However, the court found that the third factor—undue prejudice—now favored Rovi because the IPR proceedings will now have no effect on the ’034 patent claims. 

Lastly, the court was mindful of whether the costs and risks of having trials with overlapping subject matter outweighs the benefits from lifting the stay and bifurcating the ’034 patent.  Judge Oetkin concluded that given the fact that the ’034 patent involves different technology with different inventors from those of the other patents, any costs of letting the ’034 patent proceed would be justified because the reduced risk of prejudice to Rovi stemming from delay and the reduced risk of juror confusion.

Ultimately, the court granted Rovi’s motion to dismiss the ’696 patent claims, to partially dissolve the stay and to bifurcate the ’034 claims.

The case is Rovi Guides, Inc. v. Comcast Corp., No. 16-cv-9278 (JPO) (S.D.N.Y. Apr. 5, 2018).