Parallel Networks Case Moves Forward in Marshall Texas Despite Pending Appeal of Patent Reexaminations

anti-ms2As if the i4i issue wasn’t enough of a Texas debacle for Microsoft on May 10, 2010, Judge David Folsom of the U.S. District Court for the Eastern District of Texas, Marshall Division, denied Microsoft’s Motion to Continue the Stay of their litigation with Parallel Networks pending reexamination of the Patents-in-Suit (U.S. Patent Nos. 5,894,554 (the “‘554 patent”) and 6,415,335 (the”‘335 patent). The Parallel Network patents are directed to  systems and methods for managing dynamic websites.

Parallel’s patent infringement suit was temporarily stayed while a venue dispute was settled relative to copending actions in the Delaware District Court.

The USPTO has rejected all of the claims in Reexamination Control Nos. 90/008,574 (the “‘554 patent reexamination”) and 90/008,568 (the “‘335 patent reexamination”).  Both cases are now on appeal to the BPAI.  The case is rather unremarkable in that Texas court denied the stay request pending reexamination (what else is new). Judge Folsom’s rationale for denying the stay was somewhat interesting however, noting:

…unless all claims of the patents-in-suit are invalidated through reexamination, the reexamination process may actually complicate the above-captioned case by creating additional prosecution history estoppel and disavowal arguments that must likely be addressed, such as during claim construction.

I’m not sure the potential addition of non-infringement positions and favorable claim construction positions cuts in favor of denying the stay AT ALL. Perhaps the judge, was just going off on a tangent. In his defense, none of the asserted claims have been amended, so, he probably should have just stuck with that rationale.