Digital Ally, Inc. v. Enforcement Video, LLC d/b/a WatchGuard Video

Filing 66

ORDER granting 62 unopposed motion to stay litigation pending inter partes review. On or before January 5, 2018, the parties shall submit a joint status report to the undersigned's chambers. Signed by Magistrate Judge James P. O'Hara on 8/1/2017. (amh)

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF KANSAS
DIGITAL ALLY, INC.,
Plaintiff,
v.

Case No. 16-2349-JTM

ENFORCEMENT VIDEO, LLC,
d/b/a WATCHGUARD VIDEO,
Defendant.
ORDER
This matter comes before the court on defendant WatchGuard’s motion to stay this
litigation pending resolution of five petitions for inter partes review (IPR) by the United
States Patent and Trademark Office’s Trial and Appeal Board (PTAB) of the patents at
issue in this case (ECF No. 62). WatchGuard’s motion was filed on May 11, 2017. On
May 25, 2017, at the request of the parties, the court postponed consideration of the
motion until after July 24, 2017.
The following IPR petitions were filed challenging the validity of the patents at
issue in this case: (1) IPR2017-00375 filed by Taser on December 1, 2016 regarding U.S.
Patent No. 8,781,292 (“the ’292 Patent”); (2) IPR2017-00376 filed by Taser on
December 1, 2016 regarding the ’292 Patent; (3) IPR2017-00515 filed by Taser on
December 20, 2016 regarding U.S. Patent No. 9,253,452 (“the ’452 Patent”); (4)
IPR2017-00775 filed by Taser on January 25, 2017 regarding the ’452 Patent; and (5)
IPR2017-01401 filed by WatchGuard on May 9, 2017 regarding U.S. Patent No.
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9,325,950 (“the ’950 Patent”).
On June 6, 2017, the PTAB commenced review of Taser’s December 1, 2016 IPR
petition challenging the validity of the ’292 Patent (Case IPR2017-00375), which
implicates fourteen (14) claims at issue in this litigation (1, 8, 18, 20, 21, 26, 36, 38, 39,
42, 48, 51, 54, and 57). The PTAB’s review of that patent is ongoing. That same day,
the PTAB denied review of Taser’s December 1, 2016 IPR petition (Case IPR201700376), which challenged the validity of certain claims of the ’292 Patent on additional
grounds. On July 6, 2017, the PTAB denied review of Taser’s December 20, 2016 IPR
petition (Case IPR2017-00515), challenging the validity of the ’452 Patent. The PTAB
has yet to rule on Taser’s January 25, 2017 IPR petition (Case IPR2017-00775), which
asserts additional challenges to the validity of the ’452 Patent. The PTAB is expected to
issue its decision whether to institute review of that petition on August 8, 2017. The
PTAB has also not ruled on WatchGuard’s May 9, 2017 IPR petition challenging the
validity of the ’950 Patent (Case IPR2017-01401), which implicates seventeen (17)
claims at issue in this litigation (1-4, 8-10, 12-17, 20-22, and 24). The PTAB is expected
to issue its institution decision by December 6, 2017.
On July 25, 2017, the parties jointly submitted a report regarding a status of the
IPR petitions and requested that the litigation be stayed at least until the PTAB issues an
institution decision on WatchGuard’s IPR petition (Case IPR2017-01401), challenging
the validity of ’950 Patent, at which time the parties request the opportunity to again
report to the court regarding the status of WatchGuard’s IPR, any then-active TASER
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IPRs, and how the PTAB proceedings may affect this lawsuit.
IT IS THEREFORE ORDERED that defendant’s unopposed motion motion to
temporarily stay litigation pending inter partes review is hereby GRANTED. The parties
are ordered to jointly submit an updated report regarding the status of the petitions for
inter partes review on or before January 5, 2018.
Dated August 1, 2017, at Kansas City, Kansas.
s/ James P. O’Hara
James P. O=Hara
U.S. Magistrate Judge

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