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District Court Denies Motion to Lift Stay Even after Federal Circuit Affirms PTAB’s Decision Upholding Claims of Patent-in-Suit Because Petition for Certiorari Was Pending before Supreme Court

The district court had previously granted a stay pending an inter partes reexamination by the United States Patent and Trademark Office (“PTO”) of U.S. Patent No. 6,797,454 (the “‘454 patent”). After the PTO affirmed the validity of claims 2-6, 15, and 16 of the ‘454 patent, the Federal Circuit unanimously affirmed the PTO’s decision.

Although a reexamination certificate had not yet been issued, the plaintiff argued that the stay should be lifted and further argued that the certificate had not yet been issued only because the defendant had filed a petition for certiorari with the United States Supreme Court. The plaintiff argued that given the extreme unlikelihood that the United States Supreme Court would grant certiorari in this matter, particularly in light of the Federal Circuit’s summary affirmance of the PTO’s decision, the stay be lifted now.

The district court noted that “this is not the first time that there has been a request to lift the stay currently in place. In previously considering this issue, the Court held that the stay would not be lifted ‘until a reexamination certificate is issued.’ (Letter Order of 12/17/2014; Docket Entry No. 104).”

But the district court also noted that “[i]n reaching this conclusion, the Court contemplated that appeals would be taken of the PTO’s decision and the Court intended to afford the parties the ability to utilize the appellate process, including a petition for certiorari.”

As a result, the district court determined to continue the stay “despite the circumstances presented, in accordance with its previous Order, the Court shall not lift the stay until a reexamination certificate is issued.”

E.I. du Pont de Nemours and Co. v. MacDermid Printing Soluctions LLC, Case No. 10-3409 (MLC) (D.N.J. July 7, 2016)

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