Stays Pending Re-Examination in the Eastern District of Virginia
The conventional wisdom in the EDVA is that patent cases will not be stayed pending a petition for reexamination. Sometimes, however, a stay pending reexam will be granted, and a recent Order entered by Judge Spencer, found here, succinctly describes the appropriate circumstances for a stay. JuxtaComm-Texas Software, LLC v. Lanier Parking Systems of Virginia, Inc., Case No 3:11CV299 (E.D. Va. July 21, 2011) (Spencer, J.)
As Judge Spencer states, the three factors a Court which determine whether a case should be stayed pending a reexamination are:
- Whether discovery is complete and a trial date scheduled;
- Whether a stay would simplify the matters at issue;
- Whether a stay prejudice or disadvantage the non-moving party.
The key factor is whether the reexamination has reached an advanced stage before or soon after suit is filed. In JuxtaComm, a stay was granted because the PTO had issued a Final Office Action rejecting virtually all of the claims at issue before the suit was served.
In the EDVA, it is not likely that a stay will be granted unless the PTO has rejected at least some of the claims of the patent at issue before litigation moves beyond a preliminary stage.
If the reexamination is not filed until after suit is filed, a motion to stay in the EDVA is almost certain to be denied because of the slow pace of the reexamination process. An example of that slow pace is the NTP case, which Judge Spencer stayed in 2007. NTP, Inc. v. T-Mobile, USA, Inc., Case No. 3:07CV548, 2007 U.S. Dist. LEXIS 82063 (Nov. 2, 2007) (found here). The NTP case remain stayed because the NTP reexaminations, filed in 2002 and 2003, still have not concluded.