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Stay In Place: Judge Azrack Declines to Lift Stay Until Federal Circuit Weighs In

On August 6, 2019, United States District Judge Joan M. Azrack denied Plaintiff Andrea Electronics Corporation (“Andrea”)’s motion to lift the stay in Andrea Electronics Corp. v. Apple Inc., No. 16-cv-5220 (E.D.N.Y.) and, accordingly, granted Defendant Apple Inc. (“Apple”)’s cross-motion to continue the stay.  The stay will remain in place pending final resolution of the IPR proceedings before the Court of Appeals for the Federal Circuit.

The case was originally stayed in December 2016 to allow the United States International Trade Commission (“ITC”) to complete an investigation that had named Apple as a respondent.  While the ITC investigation was pending, Apple filed three IPR petitions, which were all instituted by the Patent Trial and Appeal Board (“PTAB”).  In its final written decision, PTAB determined that the claims of U.S. Patent No. 6,363,345 (the “’345 Patent”), i.e., the only remaining patent in dispute at the time the decision was issued, were unpatentable, with the exception of claims 6-9.  Apple appealed the decision with respect to claims 6-9; as of today, the appeal is fully briefed and before the Federal Circuit.

In December 2018, Andrea sought to lift the stay, and Apple cross-moved to extend it pending the Federal Circuit’s decision.  On Tuesday, Judge Azrack sided with Apple, finding that the three-factor test utilized by district courts to determine whether a case should be stayed (or, in this instance, remain stayed) pending IPR proceedings came out in favor of Defendant.  First, according to the Court, “should the Federal Circuit reverse the PTAB decision and invalidate claims 6-9, its ruling [would be] dispositive” of the action.  The conservation of judicial resources favored keeping the stay in place.  Second, the Court noted that maintaining the stayed-status-quo would not work to “halt a case that was steadily moving towards trial,” as the case was still in its “infancy.”  Finally, despite the hiatus of more than two years, Plaintiff had not demonstrated that it would be “unduly prejudice[d]” by the continued stay.

The case is Andrea Electronics Corp. v. Apple Inc., No. 16-cv-5220 (JMA) (SIL) (E.D.N.Y. Aug. 6, 2019).