Ultratec, Inc. et al v. Sorenson Communications, Inc. et al
ORDER granting 20 Motion to Stay as stipulated by plaintiffs Ultratec, Inc. and CapTel, Inc. in Dkt. 26 . Signed by District Judge James D. Peterson on 12/21/2015. (jls)
IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF WISCONSIN
ULTRATEC, INC. and CAPTEL INC.,
SORENSON COMMUNICATIONS, INC.
and CAPTIONCALL, LLC,
These parties have four cases in this court involving telecommunication technology for
the deaf and hard-of-hearing. All of the patent claims asserted in the first case, No. 13-cv346, have been successfully challenged in an inter partes review. The third case, No. 14-cv847, involves patents related to those patents, and the court agreed to stay that case pending
the outcome of a further inter partes review.
The parties now seek to stay this fourth case for the same reason. The patent-in-suit,
U.S. Patent No. 9,131,045, claims priority to a patent with claims that PTAB has already
invalidated, and is the parent to two patents that PTAB is currently reviewing. Defendants
petitioned PTAB for review of the ’045 patent on September 9, 2015. PTAB has until March
8, 2016, to decide whether to institute review, and if it chooses to do so, it will have until
March 8, 2017, to issue a final written decision.
Ordinarily, the court would decline to stay a case involving a patent that is the subject
of merely a petition for inter partes review. It would usually be more efficient to proceed until
PTAB actually decides to initiate inter partes review. But in this case, because the ’045 patent
is so closely related to other patents that are currently undergoing, or have already
undergone, inter partes review, it is not necessary to wait and see whether PTAB initiates
review of the ’045 patent. The factors favor staying the case. See VirtualAgility, Inc. v.
Salesforce.com, 759 F.3d 1307, 1309 (Fed. Cir. 2014) (setting out factors for considering a stay
under the AIA provisions for covered business method patents); NFC Tech. LLC v. HTC Am.,
Inc., No. 13-cv-1058, 2015 WL 1069111, at *2 (E.D. Tex. Mar. 11, 2015) (applying the
VirtualAgility factors to inter partes review). First, the case is in its infancy and the trial date
has not yet been set. Second, plaintiffs have agreed to stay the case until PTAB decides
whether to institute review, so the court sees no prejudice to plaintiffs in granting the stay.
Finally, given PTAB’s decisions concerning the validity of other claims in the patent family,
there is a reasonable likelihood that the PTAB decision will simplify the issues in this case
and streamline the trial. In the meantime, staying this case will reduce the burden on
everyone by suspending discovery and motion practice until PTAB reaches its decision.
This case will be stayed until PTAB decides whether to institute review. If PTAB
grants the petition and initiates review, then the court will likely continue the stay, but it will
not do so without hearing from the parties. Accordingly, when PTAB makes its decision, the
parties should promptly inform the court of that decision and whether they request that the
stay be lifted.
IT IS ORDERED that defendants Sorenson Communications, Inc. and CaptionCall,
LLC’s motion to stay, Dkt. 20, is GRANTED, as stipulated by plaintiffs Ultratec, Inc. and
CapTel, Inc. in Dkt. 26.
Entered December 21, 2015.
BY THE COURT:
JAMES D. PETERSON
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