Lighting Science Group Corporation v. American De Rosa Lamparts, LLC
6:16-cv-01087
M.D. Fla.
May 9, 2017

Background

  • Lighting Science filed five related patent-infringement actions against Nicor, ADRL, TCPI, Satco, and Amax asserting claims of U.S. Patents 8,201,968; 8,672,518; and 8,967,844.
  • Defendants asserted invalidity defenses/counterclaims and filed petitions for inter partes review (IPR) at the PTAB challenging the asserted claims under the AIA procedure.
  • PTAB had previously instituted IPRs on claims of the ‘968 and ‘844 patents in a related matter; the new petitions were filed April 17, 2017.
  • Defendants moved to stay the district-court actions pending PTAB resolution; Lighting Science opposed the stays.
  • The district court found discovery and claim construction not complete, no trial dates set, and consolidation/pleading amendments had delayed proceedings.
  • The court concluded IPR could simplify or resolve validity issues and that plaintiff had not shown undue prejudice requiring denial of a stay.

Issues

Issue Plaintiff's Argument Defendant's Argument Held
Whether to stay district litigation pending IPR Stay would unduly prejudice Lighting Science and delay relief IPR will address validity, simplify issues, and is efficient under the AIA Court granted stays in all five actions
Effect of procedural posture on stay Litigation delays reflect plaintiff's need for progress; a stay is inappropriate Cases are in early stages: discovery incomplete, no claim construction or trial dates Court found procedural posture favored a stay
Whether IPR will simplify the case Plaintiff argued IPR may not resolve all issues Defendants argued PTAB review and potential invalidity rulings likely to simplify or narrow claims Court held simplification factor strongly favored a stay
Whether stay would unduly prejudice plaintiff Plaintiff claimed competitive harm and tactical disadvantage Defendants noted expedited AIA procedures and lack of plaintiff urgency Court found prejudice minimal and not dispositive; stay granted

Key Cases Cited

  • SAD Inst., Inc. v. ComplementSoft, LLC, 825 F.3d 1341 (Fed. Cir. 2016) (discussing IPR scheme and PTO review process)
  • Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d 1309 (Fed. Cir. 2016) (explaining PTAB institution standard and IPR stages)
  • VirtualAgility Inc. v. Salesforce.com, Inc., 759 F.3d 1307 (Fed. Cir. 2014) (addressing stay factors and undue weight on competitive status)
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