United States District Court, District of Minnesota, Fifth Division
Timothy E. Grimsrud, Esq., Kenneth A. Liebman, Esq., Lauren MarieWilliams Steinhaeuser, Esq., Linzey A. Erickson, Esq., and Kevin P. Wagner, Esq., Faegre Baker Daniels LLP, counsel for Plaintiff.
Andrew C. Ryan, Esq., William J. Cass, Esq., Nicholas A. Geiger, Esq., Tasia E. Hansen, Esq., and Herbert M. Bedingfield, Esq., Cantor Colburn LLP; and Mark J. Burns, Esq., Haugen Law Firm PLLP, counsel for Defendant.
MEMORANDUM OPINION AND ORDER
DONOVAN W. FRANK UNITED STATES DISTRICT JUDGE
This matter is before the court on Defendant Microboards Technology, LLC’s, d/b/a Afinia (“Afinia” or “Defendant”), Motion to Stay Litigation Pending Inter Partes Review of the Asserted Patents (Doc. No. 120). For the reasons set forth below, the Court denies the motion.
This patent infringement suit relates to three-dimensional (“3D”) printing. Both Plaintiff Stratasys, Inc. (“Stratasys”) and Afinia develop, manufacture, and sell 3D printers. (See generally, Doc. No. 1 (“Compl.”).) Stratasys owns a number of patents that relate to 3D printing, including U.S. Patent No. 5, 653, 925 (“’925 Patent”), U.S. Patent No. 5, 866, 058 (“’058 Patent”), U.S. Patent No. 6, 004, 124 (“’124 Patent”), and U.S. Patent No. 8, 349, 239 (“’239 Patent”). (Id.) Plaintiff’s claims generally relate to technology concerning the extrusion of a plastic filament that is found in 3D printers. (See, e.g., Compl. ¶ 18.) The plastic filament moves by drive wheels through a heated liquefier and is deposited in layers to form a 3D object. (See id.) Temperature control, nozzle thickness, and so-called “road width” can impact the resulting object. (See id.)
Afinia filed three petitions with the Patent Trial and Appeal Board (“PTAB”) on November 21, 2014, requesting that the Patent and Trademark Office (the “PTO”)reconsider the validity and scope of the patent claims asserted in this action under the inter partes review (“IPR”) process (the “IPR Petitions”). The three IPR Petitions are for the following patents: ’124 Patent, ’239 Patent, and ’058 Patent. Stratasys’s preliminary responses to the Petitions were due by March 5, 2015. The PTO now must decide whether to grant the IPR Petitions by June 5, 2015.
With respect to discovery, both parties have produced documents, served interrogatories and requests for admission, taken depositions, and served third-party subpoenas. (See Doc. No. 132 (“Grimsrud Decl.”) ¶¶ 4, 5.) The parties have filed a number of joint stipulations to amend the case schedule. (See Doc. Nos. 134 & 141.) Under the most recent proposed amended schedule, fact discovery will be completed by May 15, 2015. (Id.) Stratasys has served infringement contentions and Afinia has served non-infringement contentions and a prior art statement. (Grimsrud Decl. ¶¶ 4, 5.) The parties have also submitted their joint claim construction statement, including a Stratasys expert report. (See id.; see also Doc. No. 107.) Some dispositive motions have been decided (see, e.g., Doc. Nos. 101 & 140), but a number of substantive dispositive motions likely remain (see Doc. No. 141).
Defendant now seeks a stay of this litigation pending a final determination by the PTO on the pending three IPR Petitions. (See Doc. Nos. 120 & 121.)
I. Motion to Stay
The power to manage its docket and to stay proceedings is within the district court’s discretion. See, e.g., Dane Techs., Inc. v. Gatekeeper Sys., Inc., Civ. No. 12-2730, 2013 WL 4483355, at *3 (D. Minn. Aug. 20, 2013) (citing Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1426-27 (Fed. Cir. 1988)). The burden of establishing that a stay is appropriate is with the party seeking the stay. Rensselaer Polytechnic Inst. v. Apple Inc., Civ. No. 13-633, 2014 WL 201965, at *3 (D. Minn. Jan. 15, 2014) (citation omitted).
Courts consider three factors to determine whether a stay of litigation is appropriate pending IPR by the PTO: (1) whether a stay would unduly prejudice or present a clear tactical disadvantage to the non-moving party; (2) whether a stay will simplify the issues in the litigation and facilitate the trial of that case; and (3) whether discovery is complete and a trial date is set. Dane Techs., 2013 WL 4483355 at *1. Additionally, courts consider whether a motion to stay is premature in light of the status of ...