United States District Court, D. New Mexico
MEMORANDUM OPINION AND ORDER
C. BRACK, SENIOR U.S. DISTRICT JUDGE
MATTER comes before the Court on Plaintiff's
Motion to Stay Action Pending Inter Partes Review of
the Asserted Patents, filed on April 3, 2019. (Doc. 68.)
While Defendant Lectrosonics, Inc. initially opposed the
motion (see Id. at 1), Defendant has since filed a
Notice indicating that it consents to the motion
(see Doc. 70).
designs and manufactures “professional audio equipment
for the television and film industries . . . .” (Doc.
33 (Am. Compl.) ¶ 73.) Plaintiff owns three patents (the
“Patents-in-Suit”) for the “Virtual
Wireless Multitrack Recording System, ” which are the
subject of this patent infringement lawsuit. (Id.
¶¶ 74-78.) “The Patents-in-Suit are directed
generally to systems and methods for wireless recording of
multi-track audio files without the data corruption or loss
of data that typically occurs with wireless data
transmission.” (Id. ¶ 79.) Defendant
“manufactures, promotes and sells throughout the United
States and the world wireless systems and audio processing
products, including” a product called the Portable
Digital Audio Record (PDR) and related accessories. (See
Id. ¶¶ 4, 80.) Plaintiff asserts that
Defendant markets its “products, and specifically the
PDR and related accessories, to directly compete with
[Plaintiff's] products . . . .” (Id.
¶ 80.) Plaintiff asserts that Defendant has infringed on
one or more of the Patents-in-Suit with the manufacture and
sale of its own “electronic audio equipment, including
the PDR and related accessories.” (Id. ¶
2018, Defendant filed three petitions with the U.S. Patent
and Trademark Office for inter partes review (IPR)
by the Patent Trial and Appeal Board (PTAB). (Doc. 68 at 4.)
“The purpose of inter partes review is to
create a more efficient, cost-effective alternative to
litigation.” Dentsply Sirona, Inc. v. Edge Endo,
LLC, No. 1:17-cv-01041 WJ/SCY, 2018 WL 4773369, at *1
(D.N.M. Oct. 3, 2018) (citation omitted). The PTAB has
instituted all three IPRs, and final written decisions are
expected in January 2020. (Doc. 68 at 4.)
To determine whether to stay a case pending inter
partes review, district courts typically consider,
‘(1) whether discovery is complete and whether a trial
date has been set; (2) whether a stay will simplify the
issues in question and trial of the case; and (3) whether a
stay would unduly prejudice or present a clear tactical
disadvantage to the nonmoving party.
Dentsply Sirona, 2018 WL 4773369, at *1 (quoting
Digital Ally, Inc. v. Taser Int'l, Inc., No.
16-cv-2032-CM-TJJ, 2017 WL 1048351, at *2 (D. Kan. Mar. 20,
2017) (subsequent citation omitted)). Here, while this case
has been pending since April 2017, the parties have not yet
begun discovery because venue has changed twice.
(See Doc. 70 at 1.) The Court has not set a trial
date. The first factor favors a stay.
Court agrees with Plaintiff that a stay may also simplify the
issues, as the PTAB's decisions may narrow or cancel one
or more of the claims. (See Doc. 68 at 8-9.)
“Estoppel may also apply.” Dentsply
Sirona, 2018 WL 4773369, at *2 (citation omitted). The
second factor favors a stay. Finally, Defendant does not
assert that a stay will cause undue prejudice or create
tactical disadvantages. (See Doc. 70.) Thus, the
third factor also favors a stay.
the motion is unopposed and the applicable standard favors
staying this matter pending decisions from the PTAB, the
Court finds that Plaintiff's motion is well-taken and
will be GRANTED and this matter will be
STAYED pending inter partes review.
IT IS ORDERED that Plaintiff's Motion to
Stay Action Pending Inter Partes Review of the
Asserted Patents (Doc. 68) is GRANTED;
IS FURTHER ORDERED that this case and all deadlines
herein are STAYED pending resolution of the
inter partes review proceedings;
IS FURTHER ORDERED that the parties are directed to
file a joint status report, or motion to lift stay, if
appropriate, at the completion of the inter partes
IS FURTHER ORDERED that Plaintiffs Motion to Dismiss
Defendant's Counterclaims and to Strike Defendant's
Affirmative Defenses (Doc. 69) is hereby DISMISSED
WITHOUT PREJUDICE. Plaintiff is granted leave to
renew the motion, if appropriate, after the stay is lifted.