After Six Years, Stay Pending Reexamination Is Lifted As the Life of the Patents Is Nearly Extinguished

November 18, 2011

In December 2004 and early in 2005, the plaintiff filed three patent infringement actions against several parties. The district court consolidated the cases. All of the consolidated cases were stayed by the district court pending reexamination by the Patent and Trademark Office ("PTO"). Many years later, the Board of Patent Appeals and Interferences ("BPAI") upheld the validity of two of the patents. As a result, the plaintiff moved to lift the stay of the consolidated actions. Defendants opposed the lifting of the stay.

After noting that courts have inherent power to manage their dockets and stay proceedings, including the authority to order a stay pending a conclusion of a PTO reexamination, the district court stated that "[t]wo of these cases have been pending before this Court for seven years and the third case has been pending for six years." The district court also noted that the BPAI had upheld the validity of two of the patents and that the life of the patents was nearing extinction. Accordingly, the district court concluded that lifting the stay was appropriate. "The Court concludes that justice requires the lifting of the stay in this action."

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The decision is most notable for the amount of time that passed while the case was stayed pending reexamination, highlighting the problem faced by patent holders who end up in a lengthy reexamination proceeding. In this case, the reexamination proceedings--which ultimately upheld the validity of the patent--nearly extinguished the life of the patent.


The Ohio Willow Wood Company v. DAW Industries, Inc., Case No. 2:04-cv-1222 (E.D. Ohio Nov. 9, 2011)

The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Stan Gibson at 310.201.3548 or SGibson@jmbm.com.