Category Archives: stay

A Tale of Two Patent Litigation Stays

This is a story about not one, but two stays.  The first stay is a district court stay pending the outcome of a reexamination of a patent in suit.  The second is an administrative (PTAB) stay of that same reexamination … Continue reading

Posted in America Invents Act, inter partes review, Litigation, PRPS Patent Review Processing System, PTAB, PTAB Patent Trials, reexamination generally, stay, stay of other administrative proceedings | Tagged , , , , , , , , , , , , , , , , | 1 Comment

Progressive Casualty Litigation Stayed Pending Outcome of Liberty Mutual CBMs

Progressive Casualty Insurance Co. sued different insurance companies for patent infringement of 5 of its patents in 2010-2012 in the Northern District of Ohio.  (Cases 1:10CV01370 and 1:11CV00082 against Safeco; Case 1:12CV01068 against State Farm; and Case 1:12CV01070 against Hartford.) … Continue reading

Posted in America Invents Act, claim challenges, covered business methods, estoppel, estoppel from administrative proceeding, factors for stay, indefiniteness, Litigation, Patent Reform, patent-eligible subject matter, Post Grant Review, PTAB, PTAB Patent Trials, reexamination generally, statutory subject matter, stay, Uncategorized | Tagged , , , , , , , , , , , , , , , , , | Leave a comment

Declaratory Judgment Plaintiff and Stays Pending Reexamination

In Interwoven, Inc. v. Vertical Computer Systems, Inc. (Case No. C 10-04645 RS, Northern District of California), Judge Richard Seeborg was less than persuaded by Interwoven’s attempt to obtain a stay after filing an ex parte reexamination of the patents … Continue reading

Posted in estoppel from administrative proceeding, ex parte reexamination, factors for stay, inter partes reexamination, Litigation, Protective Order, reexamination generally, reexamination pendency, stay | Tagged , , , , , , , , , , , , , , , , , | Leave a comment

Strategic Use of Reexamination in view of the Patent Reform Bill

Last week I had the privilege of speaking on reexamination at the AIPLA Electronics and Computer Law Summit.  The title of my speech was “Strategic Use of Reexam after Patent Reform – Post-Grant Review and Inter Partes Review.”  The powerpoint presentation materials can be found here.  The … Continue reading

Posted in covered business methods, estoppel, estoppel, estoppel from administrative proceeding, ex parte reexamination, factors for stay, inter partes reexamination, inter partes review, Litigation, motion practice, Post Grant Review, PTAB, raised or reasonably could have raised, raised or reasonably could have raised, reexamination generally, Reissue, stay, Substantial New Question (SNQ), supplemental examination | Tagged , , , , , , , , , , , , , , , , , , , , , , | 1 Comment

Stay of Litigation Pending Inter Partes Reexamination Warranted Despite Possible Lengthy Reexam Pendency

District courts are making increasingly detailed and sophisticated decisions on motions to stay litigation pending reexamination.  One example is the analysis performed in N Spine Inc. and Synthes USA Sales, LLC v. Globus Medical Inc., (1-1–cv-00300 (DED)).  N Spine and Synthes USA Sales … Continue reading

Posted in factors for stay, inter partes reexamination, Litigation, reexamination generally, reexamination pendency, stay | Tagged , , , , , , , , , , , , | Leave a comment

Stays Pending Reexamination and Experts Subject to a Prosecution Bar

In Interval Licensing LLC v. eBay, Inc., et. al., 2-10-cv-01385 (WAWD),  Interval Licensing (Interval) filed a motion for reconsideration of an earlier order by the Court to stay the litigation pending reexamination.  On July 12, 2011, Judge Marsha J. Pechman denied the motion. … Continue reading

Posted in ex parte reexamination, Expert, factors for stay, inter partes reexamination, Litigation, Prosecution Bar, reexamination generally, stay | Tagged , , , , , , , , , , , , , | Leave a comment

Patent Owner Stay Motion Successful Based on Defendants’ Reexam Requests Filed on Eve of Markman

In Fifth Market, Inc. v. CME Group Inc, et al., (1-08-cv-00520, D. Del), the Patent Owner/Plaintiff (Fifth Market, Inc.) sued multiple Defendants on two patents (U.S. Pat. No. 6,418,419 and U.S. Pat. No. 7,024,387) in 2008.  Three amended complaints were … Continue reading

Posted in ex parte reexamination, factors for stay, Litigation, reexamination generally, stay, Uncategorized | Tagged , , , , , , , , , , , | Leave a comment

TiVo’s Reexamination Strategy Helps Win a Stay in the Northern District of California

The chronology of the dispute between TiVo, AT&T and Microsoft is complex and so are the digital video recorder (DVR) technologies covered in the patents that are asserted.  All of these complexities seemed to weigh in favor of a stay in … Continue reading

Posted in Appealable, ex parte reexamination, factors for stay, Litigation, reexamination generally, stay, Uncategorized | Tagged , , , , , , , , , , , , , , , | Leave a comment

Patent Owner Reexamination Requests with Parallel Litigation

You have worked hard and obtained a patent for your company.  You do your homework and believe that your competitor is infringing your patent.  You ultimately engage the help of a litigation team and sue the competitor for patent infringement.  But … Continue reading

Posted in ex parte reexamination, Litigation, reexamination generally, stay, Substantial New Question (SNQ) | Tagged , , , , , , , , | 1 Comment

Factors in Deciding Motions to Stay Litigation Pending Reexamination

If a patent is in reexamination at the outset of a patent infringement action, there is a possibility of obtaining a stay from the district court.  But motions to stay are not always successful, and they are decided  after consideration … Continue reading

Posted in factors for stay, inter partes reexamination, Litigation, reexamination generally, stay | Tagged , , , , , , , | 2 Comments