United States District Court, D. Maryland
INITIAL PROCEDURAL MEMORANDUM AND ORDER
MARVIN J. GARBIS, District Judge.
Plaintiff, CTP Innovations, LLC ("CTP"), is the owner of United States Patent Nos. 6, 611, 349 ("the 349 Patent") and 6, 738, 155 ("the 155 Patent") (collectively, "the Patents in Suit"). The Patents in Suit pertain to systems and methods relating to the printing industry. CTP has sued some 49 printing companies, alleging infringement of the 359 and 149 Patents. In addition, Taylor Publishing Company ("Taylor") has commenced a declaratory judgment action and is a Counterclaim Defendant. In the instant document, the Court refers to Taylor, together with the parties sued by CTP as, collectively, "the Defendants." To date, 41 of these cases have settled, leaving eight cases pending in 6 districts.
On July 29 and August 2, 2013, Printing Industries of America filed Inter Partes Review ("IPR") petitions regarding the Patents in Suit. The Patent Trial and Appeal Board ("PTAB") declined to accept the petitions.
On May 20, 2013, Eastman Kodak, Co., Agfa Corp., Esko Software BVBA, and Heidelberg, USA ("the Manufacturers") filed four petitions for IPR with PTAB regarding the Patents in Suit. On November 26 and 29, 2014, the PTAB accepted the petitions with regard to all claims of the 155 Patent and most claims of the 349 Patent. The only claims not at issue in the PTAB proceeding are method claims 4-9 of the 349 Patent. These claims shall hereinafter be referred to as "Claims 4-9." The PTAB proceedings are underway with a decision anticipated no later than a year after the November dates on which the proceedings commenced, i.e., November 26 and 29, 2015.
On December 12, 2014, the United States Judicial Panel on Multidistrict Litigation ("the Panel") issued its Transfer Order [Document 1] consolidating the pending actions involving the Patents in Suit and transferring them for pretrial purposes before this Court.
On January 8, 2015, the Court held a case planning conference attended, in person and by telephone, by counsel for all parties in the eight pending cases. CTP advises that it may be filing additional (20 to 40) "tag-a-long" cases in various districts asserting claims of infringement of the Patents in Suit.
II. THE STAY MOTION
The Court has before it Defendants' Motion to Stay Pending Inter Partes Review Proceedings Before the Patent Trial and Appeal Board [Document 12] and the materials submitted relating thereto. The Court has held a hearing on the motion and has had the benefit of the statements of counsel for all parties relating thereto.
All Defendants seek a stay of the pending cases until the conclusion of the PTAB proceedings relating to the Patents in Suit. CTP opposes any stay and contends that if the Court should grant a stay, it should stay only proceedings regarding the claims involved in pending PTAB proceedings. CTP further contends that, to the extent any stay is granted a Defendant, that Defendant should, consistent with frequent practice in the District of Delaware and some other districts, agree to be bound by the estoppel effect of 35 U.S.C. § 315(e) in regard to the pending PTAB proceedings. See, e.g., Softview LLC v. Apple Inc., Civ. No. 10-389-LPS, 2012 WL 3061027, at *3 (D. Del. July 26, 2012)(declining to stay case, in part, because non-participating defendants "would remain free to assert additional prior art references at trial, and/or different combinations of the same prior art references now being asserted by [a third party] in the reexamination proceedings.").
A. Claims At Issue in Pending PTAB Proceedings
The Court concludes, in view of its high level of confidence that the PTAB will render its decision no later than November 29, 2015, that a stay of proceedings regarding the claims at issue in the pending PTAB proceedings is appropriate. However, the Court agrees with CTP that a Defendant seeking to obtain the benefit of the stay should agree to be bound by the estoppel effect of 35 U.S.C. § 315(e).
The Court finds certain Defendants' positions that the Manufacturers may not present their contentions as skillfully as would that Defendant, unpersuasive. If a Defendant believes its counsel can do a better job of advocacy that the Manufacturers, it should forego the benefit of a stay and have its own counsel exercise their skills to re-litigate issues that the Manufacturers may have lost in the PTAB.
Certain Defendants have stated that the Manufacturers may have a conflict of interest with them and, therefore, proceed before the PTAB in a manner inconsistent with the Defendant's interests. The Court finds no basis to believe that the Manufacturers would have any different, or lower, interest than Defendants in a PTAB decision invalidating the Patents in Suit. Moreover, as to any claim modification issues in the PTAB, the Court sees no realistic probability that the Manufacturers would seek a modification favorable to them but not equally favorable to ...