Soverain Software, L.L.C. v. Amazon.com, Inc., 356 F.Supp.2d. 660 (E.D.Tex. 2005)
Judge: Davis
Division: Tyler
Holding: Motion to Stay Proceedings Pending Completion of the Reexamination DENIED
COMMENTS:
This is a patent case filed just over a year ago involving three patents. The claim construction hearing was held in early January, and the case is set for trial in August 2005. The defendant sought a reexamination of the patents in suit in August and November of last year, and a few days before the Markman hearing the defendant notified the court that it would be seeking a stay, and filed the motion a week after the hearing (the patent office eventually granted the requests for reexamination of all three patents).
At the conclusion of an oral hearing on the motion on Monday, February 7, Judge Davis denied the motion, and followed up with a written order two days later. In that order, Judge Davis sets forth the standards for a stay pending reexamination, and applies the facts of the case to those standards.
He concluded that the first factor, which asks whether a stay would unduly prejudice or present a tactical disadvantage to the plaintiff weighed against a stay, since the defendant had waited until the case was a year old and the court had held the Markman hearing before moving for a stay despite the fact that over 90% of all reexamination requests are granted (citing statistics from the United States Patent and Trademark Office, Ex Parte Reexamination Filing Data dated September 30, 2004).

The second factor, which asks whether a stay would simplify the issues in this case, was more equivocal, Judge Davis decided. However, he wrote that "[a]lthough there may be circumstances that warrant a stay, the Court is unwilling to adopt a per se rule that patent cases should be stayed during reexamination because some of the relevant claims may be affected. To do so would not promote the efficient and timely resolution of patent cases, but would invite parties to unilaterally derail timely patent case resolution by seeking reexamination. Some of the claims may change in this case, but the Court is of the opinion that the interests of justice will be better served by dealing with that contingency when and if it occurs, rather than putting this case indefinitely on hold. Firm trial settings resolve cases and reduce litigation costs. Accordingly, the possibility of issue simplification is not sufficiently persuasive in this case." (Emphasis added).
Judge Davis then found that the third factor, which asks whether discovery is complete and whether a trial date has been set, weighed heavily in favor of denying the stay.
Judge Davis' opinion concluded by stating:
"In all cases before it, the Court places great importance on going to trial on the date set in the scheduling order unless extraordinary circumstances arise. The Court does not believe that reexamination is necessarily such an extraordinary circumstance in this patent case." (Emphasis added).