ar123551342397313When 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 defendants took no action to defend themselves against plaintiff Blazek’s claims of patent infringement. Indeed, the defendants conducted no fact discovery, made no assertions concerning non-infringement or non-willful infringement, did not submit claim construction contentions, and did not submit expert reports. In essence the defendant seemingly simply stuck their head in the sand hoping the problem would go away. Defendant Burton only requested reexamination in February 2010, even though Blazek filed its lawsuit in June 2008 and trial is scheduled for December 2010. Under this set of facts, it seems that defendants’ request for a stay was hopeless from the outset, as the request for a stay appears only to have been filed solely for tactical advantage that would have unduly prejudiced Blazek. The judge also cited the advancing age of the inventor as a significant factor weighing against years of delay.

Perhaps even more mind boggling is the fact that Burton’s requests for reexamination was terminated based on a failure to remedy an earlier notice of non-compliance.