On January 23, 2020, Judge Godbey issued a decision in Uniloc 2017 LLC v. LG Electronics (available here). Nine months after Uniloc filed suit, LG filed a petition for inter partes review of the patent-in-suit. Although the PTAB had not decided whether to institute the IPR, the Court found that a stay was warranted, as: (i) the parties weren’t competitors, (ii) Uniloc did not seek a preliminary injunction which suggested that monetary damages could adequately compensate it, (iii) LG did not have a “dilatory motive” in filing the IPR (it filed the IPR within one month of receiving Uniloc’s infringement contentions) and filed the instant motion to stay ten days after filing the IPR petition, (iv) a stay could simplify the issues in the case (either claims could be invalidated such that they need not be litigated, or the claims would survive and LG estopped from asserting invalidity on any ground it raised or could have raised during the IPR), (v) the case was in the early stages of litigation (discovery had not closed, claim-construction briefs had not been filed, and no trial date had been set), and (vi) staying the case pending the IPR would reduce the burden parallel litigation would otherwise impose on the Court and the parties.
The result in Uniloc was similar to Judge Godbey’s earlier decision in MEC Resources v. Kemet Electronics Corp. (available here). In MEC, the defendant filed an IPR petition challenging all claims of the patent-in-suit three months after being sued. Judge Godbey granted a stay, even though the IPR had not been instituted.
Uniloc and MEC, however, can be contrasted with Judge Godbey’s decision in Netsoc v. Match Group (available here). In Netsoc, the case was nearly a year old when Match filed its motion to stay, and claim-construction briefing had been completed.