Motion to Lift Stay Pending Inter Partes Reexamination Denied Where Reexamination Was Not Complete

January 4, 2012


The district court issued a stay pending reexamination of an inter partes reexamination of the patent at issue in the litigation. Plaintiff filed a motion to lift the district court's stay pending re-examination based on the argument that the reexamination was nearly complete because an office action had issued invalidating many of the claims, but not all of them.

Defendants responded by asserting that the reexamination process was not yet complete and that either party to the reexamination could appeal a recent office action that had issued. In addition, one of the defendants to the action informed the court that it would appeal the office action that had issued from the PTO.

The district court sided with the defendants and denied the motion to lift the stay. "Contrary to Plaintiffs' argument, the reexamination process is not in its final throes, and none of the factors at issue weigh in favor of lifting the stay. In granting the stay, the Court found that the reexamination process was likely to simplify the case and there was no evidence of prejudice. . . . As Defendants have explained, the reexamination process is not final, and Defendant TelNav intends to appeal any decision that does not eliminate all of the claims. Given the fact that reexamination is not final, the Court does not find that lifting the stay now would be prudent. As other courts have done, the Court will await the exhaustion of the entire reexamination to lift the stay."

The district court also found it significant that the plaintiff presented no evidence that the continued stay would cause the plaintiff prejudice. "The Court also finds that Plaintiff has failed to provide any evidence that it will suffer prejudice from the continued stay. For the first time in its reply brief, Plaintiff argues that it may never complete discovery and that evidence related to its non-patent claims is likely to fade or be lost. . . . The Court finds no merit in the conjectural and unsupported assertion. There is no evidence of prejudice."

Accordingly, the motion to lift the stay was denied.

Wre-Hol LLC v. Pharsos Science & Applications, Inc., Case No. C09-1642MJP (W.D. Wash. Dec. 27, 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.