Harper Engineering Company v. FACC Operations GmbH, 1:20-cv-00510-KD-C

Harper Engineering sued FACC AG (later FACC Operations GmbH) and Airbus Americas for infringement of U.S. Pat. Nos. 10,760,315 and 10,801,244; amendments to pleadings were pending.
Court set a scheduling order with trial in the February 2023 term; discovery is at an early stage (fact discovery ongoing, no depositions, ESI discovery not begun).
Airbus filed two IPR petitions (Nov. 12, 2021) challenging all claims of both patents and moved to stay the district action (Nov. 15, 2021).
Airbus agreed to a broad estoppel (if PTAB institutes) covering prior-art grounds it raised or could have raised; co-defendant FACC agreed to a more limited estoppel as to Airbus’s instituted grounds.
The magistrate judge recommended granting the stay pending final PTAB resolution (including appeals), denying pending motions without prejudice, administratively closing the case, and permitting reinstatement within 30 days of final PTAB resolution.

Issue	Plaintiff's Argument	Defendant's Argument	Held
Whether to stay the district litigation pending PTAB IPRs	Harper opposed a stay, arguing prejudice from delay and other harms (including inventor age and case progress).	Airbus sought a stay to avoid duplicative work and to obtain PTAB expertise on validity; filed IPRs timely and promptly moved to stay.	Stay recommended: granted pending final PTAB decision including appeals.
Whether IPR will simplify issues / reduce claims to litigate	Harper argued uncertainty (PTAB not yet instituted) limits benefit.	Airbus argued IPRs challenge all claims and PTAB review (and estoppel) will likely eliminate or narrow issues and reduce duplicative litigation.	Court found likely simplification and estoppel benefits; factor favors stay.
Whether the litigation stage supports staying the case	Harper noted existing discovery and pending motions; argued delay could prejudice fact witnesses.	Airbus noted case is early (no depositions, claim construction not held) and significant work remains, so stay now saves resources.	Court concluded the case is at an early stage and this factor favors a stay.
Whether Harper will suffer undue prejudice or tactical disadvantage	Harper claimed prejudice from delay and potential loss of witness memory (inventor age).	Airbus argued no undue prejudice: not competitors, no preliminary injunction sought, IPR briefed timely, and estoppel prevents repackaging of arguments.	Court found no undue prejudice; factor favors stay.

Connor v. Secretary, Florida Dept. of Corrections, 713 F.3d 609 (11th Cir. 2013) (stay of proceedings is within the court’s discretion)
Tomco2 Equipment Co. v. Southeastern Agri-Systems, Inc., 542 F. Supp. 2d 1303 (N.D. Ga. 2008) (explaining benefits of PTO reexamination/IPR and judicial economy from staying district litigation)