Columbia Insurance Co. v. Simpson Strong-Tie Company Inc., 5:24-cv-01652

Plaintiffs Columbia Insurance Co. and MiTek Inc. allege defendant Simpson Strong-Tie Company infringed U.S. Patent No. 11,920,339, which covers a method for constructing fire-resistive wall assemblies using structural hangers.
The '339 patent is one of several in a family, all related to innovations in building hangers and fire-protection wall assemblies; MiTek is the exclusive licensee.
This action is the third infringement suit between these parties involving related patents, with earlier cases resulting in the Patent Trial and Appeal Board (PTAB) invalidating most claims from the plaintiff’s earlier patents or currently reviewing their validity.
Defendant Simpson moved to stay this litigation pending the PTAB's decision whether to institute post-grant review (PGR) of the ‘339 patent, which Simpson challenged on the same day it moved for the stay.
At the time of this order, discovery had barely begun, and no trial date had been set, placing the case in its earliest procedural phase.

Issue	Plaintiff's Argument	Defendant's Argument	Held
Whether to stay proceedings pending PTAB's PGR institution decision	PTAB action is not certain to resolve all issues, especially since ‘339 patent involves new method claims not in prior patents	PTAB review is likely to simplify or resolve issues, as it has in prior related patents; case is at a very early stage	Stay granted; PTAB review likely to simplify case, potential prejudice not substantial
Whether delay prejudices plaintiffs	Stay would unfairly harm plaintiffs, as parties are direct competitors and market harms are not easily compensable	Prejudice minimal because case just started, prior PTAB reviews likely to provide clarifications on scope/validity	Minimal prejudice; market harm outweighed by benefits of clarity from PTAB
Whether the stay will simplify issues	Future PTAB record may not resolve new method claim issues in ‘339 patent	High likelihood of PTAB instituting review and narrowing or invalidating claims based on history with patent family	Likely simplification; favors stay
Procedural appropriateness of pre-institution stay	Some courts deny such stays as premature	Many courts grant stays even pre-institution; discretion is broad	Discretionary; stay granted per case facts

Ethicon, Inc. v. Quigg, 849 F.2d 1422 (Fed. Cir. 1988) (court has inherent power to stay proceedings pending patent reexamination)
VirtualAgility Inc. v. Salesforce.com, Inc., 759 F.3d 1307 (Fed. Cir. 2014) (district court’s stay decision pending PTAB review is discretionary)