ITC, District Court, PTAB (Oh, My): Managing Triple-Header Patent Litigation

A district court litigation has lots of moving parts all by itself. But add in an IPR and then an ITC Section 337 investigation, and it may become more than the parties can handle. But will the parties agree to stay any of the proceedings? And even if they agree, would any of the tribunals oblige?

The answer, it seems, is that when the parties don’t agree, the tribunals can wind up gridlocked and nothing gets stayed. Energetiq Technology, Inc. v. ASML Netherlands BV (D.Mass.) is an excellent example of this situation.

Energetiq kicked off the district court litigation in January 2015. ASML responded with an IPR petition in May. The PTAB instituted trial in November. Energetiq moved to stay the litigation pending outcome of the IPR, a position ASML did not initially oppose. But Energetiq then filed an ITC complaint two weeks later, and the ITC instituted an investigation a month after that. The ALJ handling the ITC case denied ASML’s motion to stay the ITC proceeding pending the outcome of the IPR.

At this point, ASML reversed its position. It could have requested a mandatory stay of the district court in view of the ITC proceeding but didn’t. Then it opposed Energetiq’s motion to stay the district court case. ASML had been willing to stay the district court case when that would have meant leaving the dispute moving forward only at the PTAB (the forum arguably least favorable to patent owners), but not when it also would be under the gun of a high-speed ITC proceeding.

The district judge was sympathetic to ASML’s position and denied Energetiq’s motion to stay. She explained that Energetiq orchestrated the timing of the district court and ITC proceedings and would not be allowed to escape the consequences of its actions.

Result? The parties remain locked in an intense, fast-paced, three-front litigation despite both of them having preferred to proceed in one forum at a time. It’s hard to say whose interests the situation serves other than the lawyers’.

One point almost doesn’t bear stating: nobody even bothered to ask the PTAB for a stay. The PTAB, unlike the other tribunals involved here, operates under a statutory one-year deadline to conclude its proceeding. 35 U.S.C. § 316(a)(11). Although that deadline is extendable by up to six months for good cause, the PTAB is reluctant to grant extensions out of concern that parties might begin to regard them as routine. So with the proceeding hemmed into one year, and every part of that year tightly scheduled, any delay caused by the stay almost certainly would inconvenience the parties and the judges.

Perhaps the only lesson to be learned here is that a party seeking to stay litigation should be able to point to a consistent course of conduct that merits honoring its stay request.

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