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By Grant D. Fairbairn

waitMany companies accused of infringement have turned to Inter Partes Review (IPR) as an alternate route for challenging the validity of patent claims. Since September 2012, nearly 3,000 IPR petitions have been filed with the Patent Trial and Appeal Board (PTAB). One reason for this surge in popularity is that district courts often stay co-pending litigation to let the IPR process play out. Given this tendency, motions to stay are common after the PTAB institutes an IPR. But what happens if an accused infringer moves to stay litigation in light of a pending IPR petition? In the District of Minnesota, that motion will likely be considered premature.

The latest example is Stratasys, Inc. v. Microboards Tech, LLC, Case No. 13-3228 (DWF/TNL). The accused infringer, Microboards, filed three requests for IPR and moved to stay litigation based on the pending petitions. Judge Frank denied the motion, pointing out that “courts in this district frequently deny requests for a stay as premature where such requests are made prior to a decision by the PTO regarding whether it will grant review of a party’s IPR petition.” (Dkt. No. 145 at 4.) In support, Judge Frank cited prior decisions by Judge Montgomery, Magistrate Judge Noel, and (now retired) Magistrate Judge Graham denying similar motions as premature.

As Judge Frank noted, it is “speculative” at this stage whether the PTAB will grant review. (Id. at 5.) At the same time, he declined to set a date for a Markman hearing and indicated that he will revisit that scheduling issue after the PTAB’s June deadline to institute an IPR passes. (Id. at 8 n. 3.) Microboards must wait, but it still may come out on top.

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