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Adidas Am., Inc. v. Skechers USA, Inc.

United States District Court for the District of Oregon

June 12, 2017, Decided; June 12, 2017, Filed

Case No. 3:16-cv-1400-SI

Opinion

OPINION AND ORDER GRANTING STAY

Michael H. Simon, District Judge.

Plaintiffs adidas America, Inc. and adidas AG (collectively, "adidas") bring this lawsuit against Defendant Skechers USA ("Skechers") for patent infringement. Plaintiffs allege that Defendant's "Mega Blade 2.0" and "Mega Blade 2.5" shoes (collectively, the "Mega Blade shoes") infringe Plaintiffs' United States Patent Nos. 9,339,079 (the "'079 patent") and 9,345,285 (the "'285 patent") (collectively, the "patents-in-suit"). Defendant has filed five petitions with the United States Patent and Trial Appeals Board ("PTAB") requesting that the PTAB conduct an inter partes review ("IPR") of all patent claims asserted in the patents-in-suit. [*2]  On April 26, 2017, the PTAB instituted IPR in response to the first two petitions and scheduled trial (i.e., oral argument) before the PTAB on January 8, 2018. On May 30, 2017, the PTAB declined to institute IPR on the third and fourth of the five petitions. A decision from the PTAB on whether to institute IPR on the fifth petition is due August 27, 2017. Defendant moves for an order from this Court staying the litigation pending the PTAB's final resolution of all instituted IPR proceedings related to the patents-in-suits. For the reasons that follow, the Court grants Defendant's motion to stay.

STANDARDS

A. Inter Partes Review

The Leahy-Smith America Invents Act ("AIA"), Pub. L. No. 112-29, 125 Stat. 284 (2011) (codified in various sections of Title 35 of the United States Code), was enacted to improve and replace, among other things, the former inter partes reexamination proceeding with a new IPR proceeding and post-grant review. One of the goals of the new IPR proceeding is "to minimize duplicative efforts by increasing coordination between district court litigation and inter partes review." Wonderland Nurserygoods Co. v. Baby Trend, Inc., 2015 U.S. Dist. LEXIS 53053, 2015 WL 1809309, at *1 (C.D. Cal. Apr. 20, 2015).

Under the AIA, any "person who is not the owner of a patent may file with the [PTAB] a petition to institute an inter partes review [*3]  of the patent." 35 U.S.C. § 311(a). Petitioners "may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 [relating to invalidity of the patent or any claim on the basis of prior art]." Id. § 311(b). Before it may institute IPR, the PTAB must determine that the petition presents "a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition." Id. § 314(a). If IPR is instituted, the petitioner has the burden of proving lack of patentability by a preponderance of the evidence. Id. § 316(e).

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2017 U.S. Dist. LEXIS 89749 *; 2017 WL 2543811

ADIDAS AMERICA, INC., a Delaware corporation; ADIDAS AG, a foreign entity, Plaintiffs, v. SKECHERS USA, INC., a Delaware corporation, Defendant.

Prior History: Adidas Am., Inc. v. Skechers USA, Inc., 2017 U.S. Dist. LEXIS 89752 (D. Or., June 12, 2017)

CORE TERMS

patent, Petitions, inter partes, patents-in-suit, reexamination, infringement, instituted, discovery, courts, shoes, asserted claim, proceedings, adidas, disadvantage, invalidation, cancelled, weighs