Changing Gear in Patent Reexamination Stalls Related Litigation

Late Amendment Tips Scales in Favor of DefendantsLast 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.The court (decision here) explained:. . . Southwire’s inconsistent statements to the PTO favor a stay. In pursuing its patent claims in this Court, Southwire contends the ‘301 patent claims are valid. However, Southwire stated to the PTO that the revised claims, “particularly as amended, are not anticipated or rendered obvious by the cited prior art.” Id. at 9 (emphasis added). Southwire chose to preliminarily amend its claims, and it is upon those particular amendments that it now asserts the ’301 patent is valid over the prior art. Accordingly, it would waste the Court’s time and resources to construe the original ’301 patent’s claims. A stay would simplify and resolve any inconsistencies between Southwire’s representations to the Court and the PTO regarding the scope and validity of the ’301 patent. Southwire’s inconsistent positions regarding validity and its amendments changing the ’301 patent’s scope before the Court has conducted a Markman hearing strongly favor staying this case.With respect to the impact of the ongoing reexamination of the parent case, the court reasoned:Reexamination is not necessarily such an extraordinary circumstance that justifies a stay, and the Court previously denied a stay in this case. However, the specific facts here tip the scales in favor of a stay: Southwire substantively amended the independent claims of the patent-in-suit to avoid the prior art cited in the reexamination, Southwire has made inconsistent representations regarding the validity of the asserted claims, the Court has not yet construed the claims, and the PTO’s rejection of the parent patent has proceeded to the appeal stage of the reexamination proceedings. Standing alone, these factors do not merit a stay pending reexamination; but in combination they do.Thus, even where a stay is initially denied, an advancing reexamination may present further opportunities for defendants. Practically speaking, amendment options for many Patentees are considered non-existent due to the potential creation of an intervening rights defense. For Patentees involved in parallel litigation, this latest development will further serve to reinforce the general aversion to such claim changes in patent reexaminati

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.

The court (decision here) explained:

. . . Southwire’s inconsistent statements to the PTO favor a stay. In pursuing its patent claims in this Court, Southwire contends the ‘301 patent claims are valid. However, Southwire stated to the PTO that the revised claims, “particularly as amended, are not anticipated or rendered obvious by the cited prior art.” Id. at 9 (emphasis added). Southwire chose to preliminarily amend its claims, and it is upon those particular amendments that it now asserts the ’301 patent is valid over the prior art. Accordingly, it would waste the Court’s time and resources to construe the original ’301 patent’s claims. A stay would simplify and resolve any inconsistencies between Southwire’s representations to the Court and the PTO regarding the scope and validity of the ’301 patent. Southwire’s inconsistent positions regarding validity and its amendments changing the ’301 patent’s scope before the Court has conducted a Markman hearing strongly favor staying this case.

With respect to the impact of the ongoing reexamination of the parent case, the court reasoned:

Reexamination is not necessarily such an extraordinary circumstance that justifies a stay, and the Court previously denied a stay in this case. However, the specific facts here tip the scales in favor of a stay: Southwire substantively amended the independent claims of the patent-in-suit to avoid the prior art cited in the reexamination, Southwire has made inconsistent representations regarding the validity of the asserted claims, the Court has not yet construed the claims, and the PTO’s rejection of the parent patent has proceeded to the appeal stage of the reexamination proceedings. Standing alone, these factors do not merit a stay pending reexamination; but in combination they do.

Thus, even where a stay is initially denied, an advancing reexamination may present further opportunities for defendants. Practically speaking, amendment options for many Patentees are considered non-existent due to the potential creation of an intervening rights defense. For Patentees involved in parallel litigation, this latest development will further serve to reinforce the general aversion to such claim changes in patent reexamination.