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District Court Denies Motion to Lift Stay Pending Inter Partes Review Even Where Plaintiff Agreed to Not Pursue Claims That Were Subject to Review

Barco filed a patent infringement action in September 2011 against Defendants Eizo Nanao Corporation and Eizo Nanao Technologies, Inc. (“Eizo”), alleging that Eizo infringed various claims in U.S. Patent No. 7,639,849 (the ‘849 patent). After Barco filed a reissue application with the United States Patent and Trademark Office (the “PTO”), in which it added seventy-eight new claims to the original thirty-seven claims of the ‘849 patent, the district court stayed the action.

Eizo subsequently filed an inter partes reexamination, seeking to reexamine the original thirty-seven claims of the ‘849 patent and the district court continued the stay even though the patent was reissued by the PTO as RE43,707 (the ‘707 patent), because the inter partes reexamination proceedings initiated by Eizo were still pending before the PTO.

Barco was then permitted to file an amended complaint, which withdrew the ‘849 patent, and instead alleged infringement of certain claims in the newly issued ‘707 patent. In response, in January 2014, Eizo filed an inter partes review with the PTO, challenging the ‘707 claims now asserted against it in the amended complaint.

After all proceedings before the PTO had concluded, with the exception of the pending inter partes review of four claims of the ‘707 patent. Barco, moved to lift the stay, arguing that if the stay is promptly lifted, it would forego asserting those four contested claims against Eizo. In response, Eizo argue that continuing the stay would further simplify the issues in this case.

The district court concluded that maintaining the stay was still appropriate. “Despite the fact that Barco is now willing to abandon the four claims still under review by the PTO, the Court is persuaded that the substance of those four claims, and the arguments made by Barco in related PTO proceedings, may impact enforcement proceedings in this Court. To the extent that the PTO’s resolution of the four remaining claims impacts Barco’s infringement contentions and Eizo’s defenses in this action, awaiting PTO resolution will simplify the issues in this case. The four claims still under review in the PTO share language and limitations with other claims currently asserted against Eizo, and the arguments made by both parties in PTO proceedings will likely impact later claim construction and infringement determinations.”

The procedural posture of the case also favored maintaining the stay. “This case remains at its most nascent stage. Defendants have not yet served written discovery, no depositions have been taken, no claim constructions has occurred, and no trial has been set. . . . This case remains at its earliest stage, which overwhelmingly favors maintenance of the stay.

The district court also concluded that Barco could not advance compelling arguments regarding prejudice. “As direct competitors in the market, Barco argues that continuation of the stay in this action results in significant economic harm by allowing Eizo to produce, use, and sell allegedly infringing products. But the Court is not persuaded that the risk of prejudice for an additional five months outweighs its finding as to the other two factors under consideration. Proceedings in the PTO to this point have resulted in reissue of the patent, cancellation and amendment of multiple claims by Barco, a significant change in the scope of claims, and a narrowing of issues to be presented in this Court. The Court appreciates Barco’s economic concerns in urging for more swift resolution of this case, but imminent and final resolution of all proceedings in the PTO counsels in favor of maintaining the stay for a few additional months.”

Accordingly, the district court declined to lift the stay.

Barco, N.V. v. Eizo Nanao Corp., Case No. 1:11-cv-02964-TCB (N.D. Ga. Feb. 6, 2015)

The authors of are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Stan Gibson at 310.201.3548 or