On Sunday, March 19, 2017, an Illinois Federal Judge denied Kranos Corporation’s and Xenith LLC’ motion to stay Riddell’s helmet patent infringement cases against them, holding that a pending Patent Trial and Appeal Board (PTAB) review does not provide an automatic stay for the two cases.
As previously reported, Riddell filed two lawsuits against Kranos and Xenith in April 2016, alleging their helmet designs infringed Riddell’s patented helmet designs. While the judge presiding over the case denied Riddell’s motion to consolidate the two cases, he allowed the cases to proceed on the same discovery schedule. Both suits alleged violations of U.S. Patent Numbers 8,938,818 and 8,528,118 — entitled “Sports Helmet.” Each patent covers Riddell’s helmets basic shape and design, which includes the outer plastic shell and ventilation openings. The complaint also alleged Kranos infringed U.S. Patent Number 8,813,269 — covering Riddell’s design of a quick-release face guard. Kranos moved to stay the case in August, after it requested the PTAB reviews. However, this was denied as premature, since the PTAB had not yet decided whether it would institute proceedings.
Even though the PTAB has now decided to institute proceedings, Judge Matthew Kennelly still denied the defendant’s motion to stay the cases. In refusing to grant the motion, he stated that “a significant number of claims will remain for determination in this suit irrespective of the outcome of the IPR,” as only 23 of the patents’ 53 claims are up for review by the PTAB.
Further, Judge Kennelly noted that Xenith may unfairly benefit from the stay being granted, as it would allow Xenith to reassert defenses rejected by the PTAB, and only Kranos filed for IPR. The judge explained that if “the PTAB rejects a particular ground of invalidity asserted by Kranos, Kranos cannot reassert that ground in this lawsuit. . . But this same bar will not apply to Xenith. Thus the defendants collectively will get two bites at the invalidity apple if the court stays this case pending conclusion of the IPR proceedings.”