LexisNexis® Legal Newsroom
Does MPEP 2258/2658 (H) Encourage Improper Reexamination Requests?

As explained in my earlier post entitled Effectively Presenting a Request For Reexamination (Part I) , I pointed out that requests for reexamination commonly include argumentation that is irrelevant to a proper SNQ analysis. For example, these arguments relate to inequitable conduct, litigation infringement...

The New Texas Two-Step

-E.D. of Texas Defendants Seek to Ride Off Into the Sunset- The E.D. of Texas is well established as the premiere plaintiff forum for patent holders, speedily deciding patent cases, and finding patents invalid relatively infrequently. Similarly, the emergence of patent reexamination as an effective...

The One-Two Reexamination Punch Knocking Out Plaintiffs

Another week, another patent litigation stayed in a California court pending a concurrent USPTO reexamination. This week, Judge M. James Lorenz of the U.S. District Court for the Southern District of California has ordered a stay of the patent litigation between Synthes and GM Dos Reis Jr. Ind....

Judge Cites Length of Patent Reexamination in Denying Stay

Earlier this month, a federal judge in Florida cited to the PTO's Ex Parte Reexamination Filing Data in denying an accused infringer's request for a stay pending reexamination of the patent-in-suit. Fusilamp, LLC v. Littlefuse, Inc. , Case No. 10-20528 (S.D. Fla. June 7, 2010) . Judge Cecilia...

Stay Pending Reexamination Denied Because Defendant Did Not Raise Invalidity Defense

When evaluating a request to stay litigation pending reexamination , district courts generally consider three factors: (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 the litigation and facilitate...

Case Stayed 5 years in Favor of Inter Partes Patent Reexamination to Restart?

Back on September 25, 2005, Judge Farnan of the United States District Court for the District of Delaware stayed the litigation between Hasbasit Belting, Inc. v. Rexnord Industries, Inc. ( Civil Action 03-185 ) relating to U.S. Patent 6,523,680 . The stay was entered in favor of inter partes reexamination...

Rubbing the Court the Wrong Way in Seeking a Stay Pending Patent Reexamination

On August 20, 2010, a motion to stay the litigation between 3M Innovative Properties Co., et al. and Envisionware, Inc. (0-09-cv-01594) (NDM) pending the outcome of a parallel patent reexamination was denied. At issue in the litigation are three of 3M's patents relating to RFID technology, namely...

Stays Pending Patent Reexamination: Sweetening the Deal

Creative Motions Undermine Delay Prejudice Earlier this week, we explored an often overlooked rule that could be used by creative defendants to accelerate inter partes patent reexamination . The rule, 37 CFR 1.953(b), allows parties to an inter partes patent reexamination to essentially skip...

Patents Post-Grant: What Happens After A Case is Stayed Pending Patent Reexamination?

42% of 2007 Cases Remain Stayed Patent reexamination parallel to a district court/ITC litigation is often initiated in an attempt to stay the more cost prohibitive court proceeding. Court's will stay the ongoing litigation pending the patent reexamination outcome in the interests of judicial...

Patents Post-Grant: Court Confused by Patent Reexamination Results

Stay of California Litigation Extended to Await USPTO Clarification Typically, once a case is stayed pending patent reexamination, periodic status updates are provided to the judge. Depending upon the progress of the patent reexamination proceedings, the judge may consider lifting the stay to...

Patents Post-Grant: Judge-by-Judge Statistics on Stays Pending Patent Reexamination

Success in Halting Infringement Case Varies Across Courts/Judges Courts have the inherent power to manage their dockets, including the authority to stay patent infringement litigation pending the conclusion of a Patent Office reexamination. For this reason, patent reexamination parallel to a...

Patents Post-Grant: The Historical Skew of Inter Partes Patent Reexamination Pendency Statistics

Is Appeal Pendency Really Reflected in USPTO Pendency Figures? In considering whether or not to stay a parallel litigation in view of a pending patent reexamination the court will consider several factors . One of the more hotly contested factors is whether the stay will unduly prejudice, or present...

Patents Post-Grant: Google Takes on Lodsys Patents at USPTO

Inter Partes Patent Reexamination Filings Pose Challenge to Lodsys Late Friday, Google announced that it had filed inter partes patent reexamination requests against two of the now infamous Lodsys patents, 7,222,078 , and 7,620,565 . Over the past few months, Lodsys has been contacting iOS...

Patents Post-Grant: 500 New Claims in Patent Reexamination Backfire on Plaintiff

Parallel Litigation Stayed in View of "Tremendous" Reexamination Claim Count When faced with the assertion of a patent of dubious validity, prospective defendants increasingly resort to patent patent reexamination. Patent reexamination can be a cost effective mechanism to dissolve...

Patents Post-Grant: AIA Change to Reexamination Standard Aids Motion to Stay

Court Cites Change in Inter Partes Reexamination Standard as Justifying Stay When faced with the assertion of a patent of questionable validity prospective defendants increasingly resort to patent reexamination. Once a suit is filed, the opportunity to obtain a stay of an ongoing district court infringement...