The Post-Grant Strategist

(Co-authored by Stuart Duncan Smith)

This blog post is part of Wolf Greenfield's COVID-19 Resource Center. To access the full resource center, click here.

A stay is an important mechanism for many defendants to consider when filing an IPR. Due to the ongoing pandemic, courts have had to shift resources to address COVID-19-related concerns. In some instances, that is changing how courts evaluate motions to stay pending IPR.

Courts often consider three factors when determining whether to grant a stay pending IPR of a patent. These factors include:

1. The stage of the proceedings
2. Whether the stay will simplify the case before the court
3. Whether a stay would result in undue prejudice to the nonmoving party

As we discussed in May, PTAB decisions are a primary source for guidance regarding what constitutes a “printed publication” under § 102, because the PTAB faces the issue so frequently.  Since that post, the PTAB has continued to define the scope of what is or is not a printed publication. In most instances, where the issue was contested, the PTAB found the petitioner failed to prove a document was a printed publication.