Will An IPR Result in a Stay of Co-Pending Litigation?

Since September 16, 2012, when the procedure became available, challengers have filed 234 requests for inter partes review. In 82% of these filings, the petitioner was also a defendant in a co-pending litigation. Although the calculus of “doubling down” on a related proceeding will vary from case to case, it will often include consideration of whether the accused infringer can leverage the IPR into a stay of the civil litigation.

How do we calculate the odds that an IPR precipitates a stay of co-pending litigation? Clearly, the likelihood of a stay will depend on case-specific factors, jurisdiction, and presiding judge.  Nevertheless, as a general measure, we can begin with the number of relevant litigations.

Recognizing that a single litigation often relates to multiple IPR requests, we identified 98 litigations associated with at least one IPR. As reflected in the table below, in 51 of these cases, parties have requested a stay; 16 of these are pending and two settled before a decision on the merits. Not controlling for whether the stay was stipulated or unopposed, the 34 decisions resulted in 10 denials and 24 grants.

Thus, whereas challengers only request a stay in about half of the co-pending litigations, more than 70% of all requests for stay have been granted to date.

*Jonathan R.K. Stroud is a Law Clerk at Finnegan.