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.

Defendant Samsung filed their request for inter partes patent reexamination 8 month’s after answering the complaint and counterclaiming for declaratory judgment of invalidity. Amusingly, this late filing was characterized as a “get out of discovery free card” by CCP. Nevertheless, with regard to this delay, the judge commented that Samsung Electronics has explained that it delayed filing the reexamination request because it did not want to jeopardize the then-ongoing settlement discussions with CCP.

Samsung’s year long delay is hardly egregious, (considering discovery has not yet commenced). Also, it may be that there were significant settlement talks between the litigants here. Still, I am wondering if such a rationale isn’t so generic as to be applicable in every case?

This case was brought to my attention by the great Docket Navigator.