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Reebok International Ltd. v. TRB Acquisitions LLC

United States District Court, D. Oregon

September 22, 2017

REEBOK INTERNATIONAL LTD., et al., Plaintiffs,
TRB ACQUISITIONS LLC, et al., Defendants.

          Stephen M. Feldman, Perkins Coie LLP, Mitchell G. Stockwell, Kilpatrick Townsend & Stockton LLP, Matias Ferrario and Jonathan E. Harris, Kilpatrick Townsend & Stockton LLP, Of Attorneys for Plaintiffs.

          Kenneth R. Davis II and Parna A. Mehrbani, Lane Powell PC, Gregory F. Wesner, Lane Powell PC, Michelle Mancino Marsh, Arent Fox LLP Of Attorneys for Defendants.


          Michael H. Simon United States District Judge.

         Before the Court is Defendants' motion to stay this case pending resolution of Defendants' three petitions for inter partes review (“IPR”) currently under consideration before the United States Patent and Trademark Office (“PTO”). The deadline for the PTO to decide whether to institute review is December 28, 2017. For the reasons discussed below, Defendants' motion is granted in part and denied in part.


         A. Inter Partes Review

         Among other things, the 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 the former inter partes reexamination proceeding with a new and expedited IPR proceeding. 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) (citing Changes to Implement Inter Partes Review Proceedings, Post-Grant Review Proceedings, and Transitional Program for Covered Business Method Patents, 77 Fed. Reg. 48, 721 (Aug. 14, 2012) (codified at 37 C.F.R. §§ 42.100 et seq.)).

         Under the AIA, any “person who is not the owner of a patent may file with the [PTO] a petition to institute an inter partes review of the patent.” 35 U.S.C. § 311(a). Such 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].” § 311(b). To institute an IPR, the PTO 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.” § 314(a). If the PTO institutes an IPR, the petitioner then has the burden of proving lack of patentability by a preponderance of the evidence. § 316(e).

         The current IPR timeline is more compressed than the timeline under its predecessor inter partes reexamination procedure.[1] After the 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. § 42.107(b). The PTO must decide whether to institute an IPR within three months of when the patent owner's preliminary response is due. 35 U.S.C. § 314(b). In addition, the PTO must issue a final determination within one year of granting IPR, with the possibility of one six-month extension on a showing of good cause. § 316(a)(11).

         Although 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].” § 315(a)(1), (3). After IPR concludes, 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.” § 315(e).

         B. Motions to Stay

         A 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. When deciding whether to stay litigation pending IPR, courts generally consider the following three factors:

1. whether discovery is complete and whether a trial date has been set;
2. whether a stay will simplify the issues in question and trial of the case; and 3. whether a stay would unduly prejudice or present a clear tactical ...

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