Judge Yeakel Orders Stay Pending IPRs on 3 of 7 Asserted Patents

On February 7, 2022, Judge Yeakel stayed Bell Semiconductor LLC v. NXP Semiconductors N.V. et al. pending IPRs on three of Plaintiff’s seven asserted patents.

The case was originally pending before Judge Albright in the Waco Division. On June 9, 2020, Judge Albright granted the parties’ joint stipulation to transfer venue to the Austin Division while remaining on Judge Albright’s docket. On November 12, 2021, Judge Albright sua sponte ordered the case transferred to Judge Yeakel’s docket.

Following the transfer, Defendants moved on January 10, 2022 for a stay pending IPRs on three of the seven asserted patents. Defendants are petitioners in two of the IPRs, and a supplier of Defendants is the petitioner in the third IPR. In granting Defendants’ stay motion, the Court found that each of the three stay factors favored a stay.

First, the Court found that a stay would not impose undue prejudice or tactical disadvantage on Plaintiff. The Court based its finding on the grounds that Plaintiff neither practices the asserted patents nor competes with Defendants.

Second, the Court found that a stay will simplify the issues in question. Defendants argued that the issues would be simplified because the three IPRs encompassed 21 of the 50 claims asserted against Defendants and more than 6,700 accused products. Plaintiff countered that IPRs were pending on only three of the seven asserted patents, with one of those IPRs being initiated by a non-party supplier, such that Defendants would not be estopped from asserting the supplier’s arguments at trial should the supplier’s IPR fail. Citing authority that the object of a stay is to simplify the district court case, not necessarily eliminate it, the Court found that the potential resolution of three of the asserted patents could significantly reduce the number of claims that proceed to trial. The Court also observed that although the supplier IPR carries no estoppel effect as to Defendants should it fail, resolution of that IPR in the supplier’s favor would reduce the number of claims that go to trial.

Finally, the Court found that the status of the litigation at the time the stay was requested favored a stay. The Court noted that it had not yet issued a Scheduling Order or set a trial date. It also noted that the parties had yet to complete a substantial amount of discovery, including depositions, such that a stay may reduce the discovery required.