On May 2, 2016, in the case of Grecia v. DISH Network, LLC, 4-16-cv-00588 (CAND), a California court granted DISH Network, LLC (“DISH”) a stay of their district court litigation in light of an IPR filed by Unified Patents Inc. (“Unified”) on the sole asserted patent, U.S. Patent No. 8,887,308. The judge granted the stay contingent upon holding DISH to a limited form of estoppel—i.e., only the issues Unified actually raises and finally adjudicates in its IPRs.

And again, on May 6, 2016, in the cases of Grecia v. American Express Co., 1-15-cv-09217, Grecia v. MasterCard Inc., 1-15-cv-09059, and Grecia v. Visa Inc., 1-15-cv-09210 (NYSD), a New York court granted American Express Co., MasterCard Inc., and Visa Inc. a stay of their district court litigation in light of IPRs filed by Unified on the three patents asserted by Mr. Grecia, Patents Nos. 8,402,555, 8,533,860, and 8,887,308.

To Unified’s knowledge, this is the first time that stays have been granted in district court cases exclusively because of IPRs filed by a third-party like Unified. Unified, encouraged by the stay and the limited estoppel adopted by the court, hopes that this will serve as a model for others seeking stays by reducing litigation costs and resolving district court litigation efficiently.