by Dennis Crouch
The America Invents Act (AIA) created a delicate dance between district court litigation and inter partes review (IPR) proceedings. Patent owners often race to reach trial before the PTAB rules on validity, while accused infringers typically seek stays pending IPR. The one-year statutory deadline for IPR final written decisions provides some comfort to district courts considering stays - the delay, while substantial, is at least bounded. But what was initially conceived as a streamlined alternative to litigation has evolved into a potentially years-long process, with final written decisions now being followed by requests for USPTO Director Review and subsequent Federal Circuit appeals. This timeline extension puts courts in a difficult position when considering stays, particularly late in district court proceedings.
A recent mandamus petition highlights this tension. In In re Viasat, Inc., No. 2025-110 (Fed. Cir. Jan. 17, 2025), Judge Albright took the unusual step of sua sponte staying a patent case just days before trial in a case that had completed its IPR review and was instead awaiting Federal Circuit's appellate review. The IPR decision had cancelled some of the asserted claims, but left Claim 16 as untouched - and the patent challenger appealed to the Federal Circuit. The patentee then narrowed the litigation to focus only on that sole remaining claim and asked the court to proceed with trial. The Federal Circuit has now declined to disturb that stay through mandamus.
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