Google “Stay Granted Pending Reexamination of Patent”

<?xml:namespace prefix = o ns = "urn:schemas-microsoft-com:office:of... />

http://www.google.com/search?hl=en&a... +

Google “Stay Denied Pending Reexamination of Patent”

http://www.google.com/search?hl=en&a... +

Some insight into the consideration the courts make in deciding to grant/deny a stay. You will see in this article that the author states that, "trying to guess whether or not a stay will be granted can become a confusing matter". Just so happens that one of the Patent Attorneys I contacted responded to me with almost the same exact answer. Oh well, bought more shares on Tuesday, and just bought some more this morning. The next three weeks will be telling. Good Luck to All Longs!

http://271patent.blogspot.com/2006/0...

One of the main advantages that reexaminations provide is that invalidity contentions can be tried in a cheaper forum using a broader claim construction regime, and you have an opportunity to short-circuit the plaintiff's litigation by staying the litigation at the district court. However, trying to guess whether or not a stay will be granted can become a confusing matter.

Generally, courts consider the following factors in determining whether to grant a stay: (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 question and trial of the case; and (3) whether discovery is complete and whether a trial date has been set. Xerox Corp. v. 3Com Corp., 69 F. Supp. 2d 404, 406 (W.D.N.Y. 1999).

In most cases, reexamination requests filed within a year or so will generally support a stay, if the docket isn't moving particularly fast, and if the judge is not so keen on keeping the case:

Tap Pharm. Prods., Inc. v. Atrix Labs., Inc., 2004 WL 422697, at *1 (N.D. Ill. March 4, 2004) - "Plaintiffs have known from the start of this case three months ago that the pending reexaminations could create grounds for a stay. As of yet, this case has not progressed beyond the initial pleadings stage; the parties have not engaged in any discovery and have not filed any other substantive motions.”

Ralph Gonnocci Revocable Living Trust v. Three M Tool & Mach. Co., 68 U.S.P.Q.2d 1755, 1758 (E.D. Mich. 2003) - "This action has been pending for less than a year. Undoubtably the parties have spent considerable time and resources thus far - substantial discovery has been conducted and the parties have submitted witness lists and three lengthy summary judgment motions. Yet far more time and resources remain to be spent before this matter is concluded. Two responses to motions for summary judgment must be submitted, the Court has not begun to review those motions, and much remains to be done by the parties and the Court to prepare this case for trial.”

Softview Computer Prods. Corp. v. Haworth, Inc., 2000 WL 1134471, at *3 (S.D.N.Y. Aug. 10, 2000) - "[A]lthough there has been a great deal of activity in this litigation to date, much remains to be done before the case is ready for trial. Discovery is not yet completed, extremely voluminous summary judgment motions have been served, the Markman hearing has not yet been held and the Pretrial Order has not yet been prepared.”

Robert H. Harris Co. v. Metal Mfg. Co., 1991 WL 217666, at *4 (E.D. Ark. June 21, 1991) - “[T]his action has been pending less than a year. Although it is set for trial next month, the Court is not persuaded that this a case which has ‘run an overly protracted course’ . . . The parties appear not to have engaged in expensive discovery or extensive pretrial preparation.”

Emhart Indus., Inc. v. Sankyo Seiki Mfg. Co.,1987 WL 6314, at *3 - “[S]ubstantially no trial preparations have been carried out -- there is no pretrial order in place and no trial schedule has been set.”

But sometimes, courts reach a point where enough is enough:

Toro Co. v. L. R. Nelson Corp., 223 U.S.P.Q. 636, 638 (C.D. Ill. 1984) - "This suit has been pending in litigation for almost 3 1/2 years. Before the motion for stay was filed, the court had under advisement a motion by defendant for summary judgment, which may well be dispositive of the issue of validity of asserted claims 14 and 15. Those factors militate against a stay at this stage of the proceedings. The pendency of this suit does not necessarily preclude any further proceedings which the Patent Office may choose to pursue. It is the opinion of the court that its granting of a stay order would accomplish little, other than the delay of disposition of a suit which has, until now, run an overly protracted course."

Readers may recall that in last month's EchoStar case, the court granted a stay based on a seemingly late-filed reexamination request (3+ years) based off of a countersuit.

This prompted me to do some leisurely digging, and I was quite surprised when I came accross this 2004 Southern District of Iowa case (Middleton v. 3M No. 4:03-cv-40493), where a stay was granted off of an ex-parte reexamination request that was filed over 8 years after the lawsuit began:

In the present case, the litigation has been ongoing for over eight years. The trial date is set and is scheduled for [less than 2 months time]. In addition, several motions for summary judgment remain pending that may be dispositive of some or all of the issues remaining in the case. Discovery is completed, and the parties are most likely well into their trial preparation. Thus, the parties have already spent a considerable amount of time and money on the pending litigation. On its face, these facts seem to weigh against granting a stay.

However, these facts should be weighed against the benefits of issuing a stay. As argued by [defendant], the following factors weigh in favor of issuing a stay: (1) a stay will be the most efficient use of judicial resources by preventing duplication of effort; (2) the reexamination may simplify and narrow the issues in the case; and (3) the Court will be able to benefit from the expertise of the PTO. Moreover, a stay issued pending reexamination “is not for such a protracted or indefinite period” as reexamination proceedings are to “‘be conducted with special dispatch.’” . . . Thus, while some courts have denied a stay based on the end of discovery and the proximity of trial . . . the ultimate determination is within the Court’s discretion based on a weighing of the benefits of issuing a stay versus any added expenses resulting from the stay.