As discussed previously, defendants accused of patent infringement that are hauled before a plaintiff friendly Texas court, not surprisingly, tend to seek transfer to a less favorable venue where possible. Often times, the “favorability” of an alternative venue may be driven in part by the tendencies of the alternative venue to stay a litigation pending patent reexamination. I previously identified this tactic as the “New Texas Two-Step.”
After a few years of dancing around a first plaintiff initiated suit in Texas, followed by a second defendant initiated suit in Virginia (later consolidated to Texas), Juniper Networks was able to successfully execute the Texas Two Step. On Monday, the Northern District of California (receiving the dispute by transfer from Texas) stayed the dispute between Juniper Networks and Graphon Corp pending the outcome of patent reexamination.
In the dispute, four patents are asserted against Juniper, U.S. Patents 7, 249, 378; 7,269, 847; 7,383,573; and 7,424,737. Once the case was transferred from Texas to the Northern District of California, Juniper filed inter partes reexamination requests (just last month) against two of the four patents. The two requests are yet to be decided by the USPTO. Shortly thereafter, Juniper motioned to stay the case.
The court was not dissuaded by the fact that Juniper had only filed their reexamination requests last month, nor that these requests were yet un-granted. Likewise, the fact that the other two patents were not yet subject to a request did not give the court pause either. Surprisingly, the court noted that :
On August 6, 2010, the Juniper Defendants filed an Inter Partes Reexamination Request of the ‘378 Patent in the United States Patent and Trademark Office (“USPTO”). On August 30, 2010, the Juniper Defendants filed an Inter Partes Reexamination Request of the ‘847 Patent, and they assert that they intend “in the near future ” to file similar requests for the remaining patents-in-suit.
The decision deciding to stay the case is found here.
By transferring into the Northern District of California, seems Juniper chose the ideal dance partner.