Motion to Stay

Court Continues Common Practice of Denying Motion to Stay Pending IPR Filed at Pre-Institution

3Shape A/S v. Carestream Dental, LLC, Civil Action No. 1:22-cv-01829-WMR (N.D. Ga., Jan. 5, 2023)

Judge Ray denied an accused infringer’s motion to stay pending inter partes review (IPR) filed during the pre-institution phase, citing delay and speculative justifications.

Plaintiff 3Shape A/S is a Danish maker of dental equipment and software, including intraoral scanners used in dentistry. The Complaint alleges Defendant Carestream infringed three patents, including U.S. Patent Nos. RE48,221, 10,695,151, and 11,076,146. Complaint, Civil Action No. 1:22-cv-01829-WMR, Dkt. 1 (N.D. Ga. Oct. 26, 2021). A fourth patent, U.S. Patent No. 11,368,667, was added in the Plaintiff’s Second Amended Complaint. SAC, Civil Action No. 1:22-cv-01829-WMR, Dkt. 86 (N.D. Ga. June 28, 2022). Each patent relates to intraoral scanning technologies, like detecting tooth shades or scanning apparatuses.

In denying the Defendant’s Motion to Stay Pending Resolution of an IPR, Judge Ray cited the Defendant’s timing and the “speculative nature as to whether the PTAB will ultimately invalidate any patent at issue.” Order, Civil Action No. 1:22-cv-01829-WMR, Dkt. 151 at 2 (N.D. Ga. June 28, 2022). In the Order, Judge Ray agreed with the Plaintiff that the Motion was “too late” given the substantial activity and progression of the case. Id. at 1.  Judge Ray noted that the filing came “halfway through fact discovery, after multiple rounds of infringement and invalidity contentions, on the eve of Markman, and with a [motion to dismiss] hearing scheduled in two days.” Id. at  2.  Judge Ray also pointed out that Defendant “had the opportunity to file IPR petitions since April,” but that they waited to do so until December. Id. at 3.

Finally, the Order noted that the pending IPR petitions provide no assurance that the issues will be narrowed, so “any potential issue simplification [urged by the Defendant] is a matter of conjecture at this stage.” Order at 3. Nonetheless, the Court reserved the right to stay the case if the IPR is, in fact, instituted.  This follows the nearly uniform treatment throughout district courts of motions to stay filed at the pre-institution stage of IPR proceedings.

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