By Memorandum Order entered by The Honorable Maryellen Noreika in Agrofresh Inc. v. Essentiv LLC et al., Civil Action No. 16-662-MN (D.Del. May 31, 2019), the Court granted the motion to stay of defendants pending resolution of plaintiff’s appeal to the Federal Circuit of the Patent Trial and Appeal Board’s (“PTAB”) Final Written Decision in the inter partes review (“IPR”) of U.S. Patent No. 9,394,216 (“the ‘216 patent”) finding that all claims of the ‘216 patent are unpatentable. In so ruling, the Court determined that (1) the potential for simplification of the issues in the case is substantial; (2) although the case is at an advanced stage than is typical for a motion to stay, the likelihood that the issues involved in summary judgement and trial will be simplified by a stay outweighs any weight to be given to the stage of the proceedings factor; (3) neither the timing of Defendants’ request for the IPR nor the timing of their request for a stay support a conclusion that Defendants are pursuing an inappropriate tactical advantage; and (4) Defendants and Plaintiff are not currently competitors. Thus, Plaintiff’s damages, if any, are monetary and could be remedied by the award of interest if Plaintiff ultimately prevails. Id. at *1-5.
A copy of the Memorandum Order is attached.
The general take away from this ruling is that, if there is substantial potential for simplification of the issues for summary judgment or trial by a ruling in the IPR of the patent-in-suit, the parties should consider filing a motion to stay the infringement action in the district court.