Stay of California Litigation Extended to Await USPTO Clarification
Typically, once a case is stayed pending patent reexamination, periodic status updates are provided to the judge. Depending upon the progress of the patent reexamination proceedings, the judge may consider lifting the stay to move forward with the litigation. For example, where claims are confirmed/allowed, a judge is likely to consider lifting the stay.
Recently, in Cellectricon AB and Gyros AB v. Fluxion Biosciences Inc. (NDCA) a status report was provided to the juge noting the progress of four patent reexamination proceedings corresponding to the patents-in-suit. (7,470,518; 7,390,650; 7,563,614; and 5,376,252) The ‘252 was subject to ex parte patent reexamination and recently concluded with its claims being confirmed, the other three patents were subjected to inter partes patent reexaminations that are still in progress. In one of these three cases claims were also confirmed by the examiner, but subject to appeal to the BPAI. Based on the positive developments, the plaintiff patentee sought to lift the stay. However, in determining whether or not to lift the stay, the judge was troubled by the seemingly inconsistent inter partes patent reexamination results. Read the rest of this entry »
Speed of Patent Reexamination Not So Special?
As most readers of this blog realize, patent reexamination parallel to a district court/ITC litigation is often initiated in an attempt to stay the more cost prohibitive court proceeding. Court’s will stay the ongoing litigation pending the patent reexamination outcome in the interests of judicial economy. Of course the ultimate determination of whether or not a stay is appropriate varies with the facts of each case, and attitudes toward such practices vary wildly across jurisdictions, and even across judges of the same court.
Last week’s determination in Osmose, Inc. v. Arch Chemicals, Inc., et. al., 2-10-cv-00108 (VAED, Norfolk) was typical in many respects. With discovery coming to a close, Markman proceedings complete, and trial scheduled in three months time, it seemed the timing alone was enough to deny the motion to stay. While the stay was denied, the court took the opportunity to call out the special dispatch accorded patent reexaminations at the USPTO as….well, not so special. Read the rest of this entry »
Your Honor…the dog ate our first reexam request
In reviewing the cases each week that analyze staying an ongoing district court patent infringement proceeding pending a concurrent patent reexamination, I am always struck by the length of time defendants will wait before seeking reexamination. In many cases, years are allowed to pass, Markman Hearings come and go, significant discovery is conducted, etc. Equally surprising is the willingness of certain courts to look the other way on such late filing practices.
Not surprisingly, once such a late a request is filed, and the corresponding motion to stay is filed with the court, plaintiffs will point out the late timing of the reexam demonstrates how the defendant is seeking to gain a tactical advantage, and how the new proceeding delay ultimate resolution and unfairly prejudice the plaintiff. To be sure, this practice appears to be waning as defendants begin to recognize the significant benefits of an ongoing patent reexamination, aside from the potential of securing a stay. Yet, for those defendants that continue to adhere to the myopic view of patent reexamination as an unlikely escape hatch only, new and improved rationales justifying delay are required.
Recently, in CCP Systems AG, v. Samsung Electronics Corp., LTD et al. (DNJ) the defendant explained away a 1 year delay with relative ease. Read the rest of this entry »
CAFC Mandamus Decision Forces Acer Dispute to California
Last Friday the CAFC ordered the District Court for the Eastern District of Texas to transfer venue to the Northern District of California (NDCA) in the case of In re Acer. Acer petitioned to the CAFC for the mandamus as to venue in their patent infringement dispute with MedioStream, a company located in the NDCA. At issue in the case is the infringement of U.S. Patents 7,009,655 and 7,283,172. In ordering the transfer of the case, the CAFC cited the location of the plaintiff in the NDCA as well as 12 of 13 defendants.
The Acer case follows on the heels of In re TS Tech USA Corp., 551 F.3d 1315 (Fed. Cir 2008) and In re Nintendo Co., 589 F.3d 1194 (Fed. Cir. 2009). Certainly, convenience, cost, and avoiding an EDTX jury were factors in pursuing the venue dispute to the CAFC. However, as most recently demonstrated by Nintendo, perhaps a more compelling factor is the opportunity to shut down the litigation altogether in a friendlier forum. Read the rest of this entry »
Late Amendment Tips Scales in Favor of Defendants
Last Wednesday, Judge Davis (EDTX) was asked to revisit a motion to stay an ongoing litigation between SouthWire Company v. Cerro Wire, et al. pending concurrent patent reexamination. Previously, the judge had denied a request to stay the case without prejudice (U.S. Patent 7,557,301). In the previous decision, Judge Davis reasoned that as the dispute is between direct competitors, such a stay could prejudice the plaintiff.
After the earlier denial, patent reexamination proceedings continued on not only for the ‘301 Patent, but also its parent, U.S. Patent 7,411, 129. The ‘129 is subject to inter partes reexamination (requested by defendant Cerro).
Recently, an attempt to amend the ‘129 Patent was denied as untimely since it was not introduced prior to the Action Closing Prosecution (ACP). However, the ‘301 Patent was not as far advanced, and, after a first action, an amendment was submitted. (June 2010). In deciding the renewed request to stay the case, the court found that the amendment tipped the scales in favor of a stay. Read the rest of this entry »
Participation in USPTO pilot program held against Patentee
In August of this year, the USPTO introduced a pilot program aimed at reducing the pendency of ex parte patent reexamination. The program entitled “Pilot Program for Waiver of Patent Owner’s Statement in Ex Parte reexamination Proceedings” is triggered once a new ex parte reexamination request is accorded an initial filing date. Once a Patentee agrees to waive the patent owner response period (since such statements are rarely filed), the USPTO is able to issue an office action together with the grant of an ex parte reexamination (just like inter partes reexamination).
Not surprisingly, many Patentess opt to maintain their right to file an Owner Statement in ex parte patent reexamination.
In my earlier posts on the pilot program I questioned the affect participation in this program would have on a district court’s decision to stay a parallel litigation. The impact of a Patentee’s participation in the pilot program was recently considered in Brass Smith LLC v. RPI Industries Inc. (D.NJ).
Perhaps realizing that NJ is rather “stay friendly,” the plaintiff decided to cooperate with the USPTO and waive their right to a patent owner response period. Brass informed the court of the participation in the program, stating that the reexam would now move faster. Brass also proposed that RPI agree to stop selling/marketing the infringing products until the reexam was completed in exchange for the stay. (see my post of last month on the self imposed injunction tactic). The thinking of Brass seemed to be that, since the NJ court was likley to grant the stay anyway, Brass may as well try to angle for some sort of benefit. Ignoring, the attempt at striking a bargain, the court just stayed the case, in part, citing the accelerated reexamination schedule as justification. Read the rest of this entry »
Creative Motions Undermine Delay Prejudice
Earlier this week, we explored an often overlooked rule that could be used by creative defendants to accelerate inter partes patent reexamination. The rule, 37 CFR 1.953(b), allows parties to an inter partes patent reexamination to essentially skip directly to the appeal stage after first action. Assuming, the parties were to agree to an expedited RAN practice, for example, as a component of an order staying a pending district court action, the examination phase of inter partes reexamination would be accelerated. Thus, the thinking is that creative defendants may seek to leverage this rule to undermine Patentee opposition to a stay. (i.e. based upon the argument that the necessary delay to conduct inter partes reexamination is unduly prejudicial).
Consistent with our suggestion to creatively address delay concerns, last week, a decision of the Federal District Court for the Western District of Pennsylvania demonstrated the general effectiveness of this tactic. (although a bit more “brute force” than our proposal)
Read the rest of this entry »
The greatest season of the year, is neither winter, spring, summer or fall, it is football season. Despite the fact that my Eagles are looking hapless these days, and my fantasy football teams are already in the toilet (thanks a lot Larry Fitzgerald), still the NFL season is always exciting. Teams once left for dead rise again, Hail Mary’s are answered (unless Jason Avant is involved, curse his name) and last second strategies rule the day.
What does all of this have to do with patent law?….nothing really, patent law is nowhere near as exciting. Yet, every once in awhile a new strategy appears that changes the game. Much like the NFL, patent practice is a “copycat league,” so, very likely coming to a patent litigation near you….the “ITC end-around.” Read the rest of this entry »
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One of the threshold questions in considering patent reexamination, whether a patent owner, or third party is:
How long will it take?
This question is also the subject of significant debate when litigants in a concurrent district court proceeding argue for/against staying the proceeding. Defendants will often point to the published PTO statistics which identify a 24-28 month pendency to conclusion (NIRC). Conversely, Patentee’s point out that these published number do not account for appeal processing. As can be seen from the chart above, reexaminations that are contested through to appeal, are taking roughly 5 years (ex parte or inter partes). Thus, it is quite disingenuous for defendants Read the rest of this entry »
When evaluating a request to stay litigation pending reexamination, district courts generally consider three factors: (1) whether a stay would unduly prejudice or present a clear tactical disadvantage to the non-moving party; (2) whether a stay will simplify the issues in the litigation and facilitate the trial of that case; and (3) whether discovery is complete and a trial date is set.
In an recent opinion, U.S. Magistrate Judge Janie S. Mayeron denied defendants’ motion to stay litigation pending ex parte reexamination because, among other reasons, the reexamination proceedings could not streamline the case. J. Blazek SKLO Podebrady s.r.o. v. Burton Int’l Enterprises, Case no. 08-cv-2354 (D. Minn. June 11, 2010). At first blush, Judge Mayeron’s rationale for denying the stay seemed illogical as it is certainly the case that, cancellation or amendment of the claims in the patents under reexamination could moot issues of validity, enforceability, infringement, and even damages.
Upon closer inspection, however, this case presents an unusual set of facts in that the Read the rest of this entry »
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