United States District Court, D. Oregon
Timothy S. DeJong and Jacob S. Gill, Stoll Berne Lokting
& Shlachter PC, 209 SW Oak Street, Fifth Floor, Portland,
OR 97204; Craig R. Smith, Eric P. Carnevale, and William J.
Seymour, Lando & Anastasi LLP, Riverfront Office Park,
One Main Street, 11th Floor, Cambridge, MA 02142. Of
Attorneys for Plaintiff.
D. O'Brien, Kevin S. Ross, and Alex C. Johnson, Marger
Johnson, 888 SW Fifth Avenue, Suite 1050, Portland, OR 97204.
Of Attorneys for Defendant.
OPINION AND ORDER
MICHAEL H. SIMON UNITED STATES DISTRICT JUDGE.
Drink Tanks Corporation (“Drink Tanks”) brings
this lawsuit against Defendant GrowlerWerks, Inc.
(“GrowlerWerks”) for patent infringement. Drink
Tanks alleges that GrowlerWerks manufacturers, uses, sells,
offers to sell, or imports beverage containers that infringe
Drink Tanks's United States Patent No. 9, 156, 670
(“the '670 patent”). Before the Court is
GrowlerWerks' Renewed Motion to Stay Litigation Pending
Completion of Inter Partes Review
(“IPR”) of sixteen out of the nineteen claims of
the '670 patent, instituted on February 22, 2017 by the
United States Patent and Trials Appeal Board
(“PTAB”). For the following reasons, the Court
grants GrowlerWerks's motion.
Inter Partes Review
Leahy-Smith America Invents Act (“AIA”), Pub. L.
No. 112-29, 125 Stat. 284 (2011) (codified in various
sections of Title 35 of the United States Code), was enacted
to improve and replace, among other things, the former
inter partes reexamination proceeding with a new IPR
proceeding and post-grant review. One of the goals of the new
IPR proceeding is “to minimize duplicative efforts by
increasing coordination between district court litigation and
inter partes review.” Wonderland Nursery
Goods Co. v. Baby Trend, Inc., 2015 WL 1809309, at *1
(C.D. Cal. Apr. 20, 2015).
the AIA, any “person who is not the owner of a patent
may file with the [PTAB] a petition to institute an inter
partes review of the patent.” 35 U.S.C. §
311(a). Petitioners “may request to cancel as
unpatentable 1 or more claims of a patent only on a ground
that could be raised under section 102 or 103 [relating to
invalidity of the patent or any claim on the basis of prior
art].” Id. § 311(b). Before it may
institute IPR, the PTAB must determine that the petition
presents “a reasonable likelihood that the petitioner
would prevail with respect to at least 1 of the claims
challenged in the petition.” Id. §
314(a). If IPR is instituted, the petitioner has the burden
of proving lack of patentability by a preponderance of the
evidence. Id. § 316(e).
current IPR timeline is more compressed than the timeline
under its predecessor inter partes reexamination
procedure. After an IPR petition is filed, the patent
owner may, within three months, file a preliminary response
“setting forth the reasons why no inter partes
review should be instituted.” 37 C.F.R. §
42.107(a). Alternatively, the patent owner may expedite the
proceeding by waiving the preliminary response. Id.
§ 42.107(b). The PTAB must decide whether to institute
IPR within three months from when the patent owner's
preliminary response is due. 35 U.S.C. § 314(b). The
PTAB must issue a final decision within one year from
granting IPR, with the possibility of one six-month extension
following a showing of good cause. Id. §
316(a)(11); Id. § 318(a). A dissatisfied party
may appeal the PTAB's decision to the Court of Appeals
for the Federal Circuit. Id. § 141(c). If the
PTAB issues a final written decision and the time for appeal
has expired or any appeal has terminated, the PTAB
“shall issue and publish a certificate canceling any
claim of the patent finally determined to be unpatentable
[and] confirming any claim of the patent determined to be
patentable.” Id. § 318(b).
IPR “may not be instituted if, before the date on which
the petition for such a review is filed, the petitioner or
real party in interest filed a civil action challenging the
validity of a claim of the patent[, ]” a
petitioner's “counterclaim challenging the validity
of a claim of a patent does not constitute [such an
action].” Id. § 315(a)(1), (3). After IPR
concludes with a final written decision, the petitioner is
estopped from asserting that a patent claim is invalid
“on any ground that the petitioner raised or reasonably
could have raised during that inter partes
review.” Id. § 315(e).
Motion to Stay
court's “power to stay proceedings is incidental to
the power inherent in every court to control the disposition
of the causes on its docket with economy of time and effort
for itself, for counsel, and for litigants.” Landis
v. N. Am. Co., 299 U.S. 248, 254 (1936). In deciding how
best to exercise this inherent power, the court “must
weigh competing interests and maintain an even
balance.” Id. at 254-55. In deciding whether
to stay litigation pending IPR, district courts typically
consider the following three factors: “(i) whether a
stay would unduly prejudice or present a clear tactical
disadvantage to the non-moving party; (ii) whether a stay
will simplify the issues in question and trial of the case;
and (iii) whether discovery is complete and whether a trial
date has been set.” Murata Mach. USA v. Daifuku
Co., Ltd., 830 F.3d 1357, 1361 (Fed. Cir. 2016)
(citation and quotation marks omitted). Courts also look to
whether “the outcome of the reexamination [or IPR]
would be likely to assist the court in determining patent
validity and, if the claims were cancelled in the
reexamination [or IPR], would eliminate the need to try the
infringement issue.” Wonderland Nursery Goods,
2015 WL 1809309, at *2 (quoting In re Cygnus Telecomms.
Tech., LLC, Patent Litig., 385 F.Supp.2d 1022, 1023
(N.D. Cal. 2005)).
apply a “liberal policy in favor of granting motions to
stay proceedings pending the outcome of . . . IPR
proceedings.” Semiconductor Energy Lab. Co. v.
Chimei Innolux Corp., 2012 WL 7170593, at *4 (C.D. Cal.
Dec. 19, 2012). Nonetheless, “the totality of the
circumstances governs, ” Wonderland Nursery
Goods, 2015 WL 1809309, at *2 (quoting Universal
Elecs., Inc. v. Universal Remote Control, Inc., 943
F.Supp.2d 1028, 1031 (C.D. Cal. May 2, 2013)), and “a
stay is never required.” Wonderland Nursery
Goods, 2015 WL 1809309, at *2. Whether
“to grant a stay falls within the court's sound
discretion.” CANVS Corp. v. United States, 118