To stay or not to stay? That is the question.  Oftentimes, a company being sued for patent infringement on a patent being reviewed at the Patent Office would ask that the court stay the litigation and wait for the outcome of the Patent Office’s review.  The Patent Office’s new inter-partes review (“IPR”) proceeding essentially culminates in a mini-trial on a patent’s validity. At present, courts nationwide have come out on both sides of the coin on the question of whether to stay a case pending an IPR proceeding.

One Massachusetts federal judge recently outlined the conditions for granting such a stay in his cases.  In Zond v. Fujitsu Limited et al., Judge Young granted Fujitsu’s motion to stay the court case, pending IPR proceedings at the Patent Office.  At a hearing in the case, Judge Young outlined the following conditions that were necessary for the grant:

  1. Fujitsu must file with the Patent Office their own petition for the IPR proceeding (as opposed to riding on the coattails of a filing made by another party);
  2. Fujitsu must agree that the patent invalidity issue will ultimately be decided by the Patent Office (and that no patent invalidity arguments will be made before the Court);
  3. The case will be administratively closed for 2 years.

Notably, in this case, the IPR proceedings had not yet been instituted at the Patent Office, as the IPR petitions were recently filed.