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E.D. Tex. Losing Confidence in PTO's Inter Partes Reexamination Program

By Peter Zura

ROY-G-BIV Corp. v. FANUC Ltd. et al., No. 2:07-CV-418 (E.D. Tex., April 14, 2009)

Plaintiff ("RGB") filed suit on September 19, 2007 alleging infringement of patents relating to motion control methods and systems that include software for communicating with and controlling different motion control devices. A year after litigation commenced, multiple inter-partes reexamination requests were granted in the PTO. Defendants moved to stay the litigation.

In denying the motion, Judge Folsom stated

In the past, this Court has noted the findings of the Institute for Progress, an independent organization that has analyzed the inter partes reexamination process. See ESN, LLC v. Cisco Systems, Inc., No. 5:08-CV-20-DF (E.D. Tex. Nov. 20, 2008). On average, inter partes reexaminations in which a patentee defends its rights may take anywhere from thirty-four to fifty-three months without an appeal. Id. at 4. If the PTO?s finding is appealed the process may take between five to eight years. Id. Because Defendants? reexamination requests were filed a little over six months ago, a stay in this case would, at a likely minimum, last another twenty-eight months.

* * *

The Court is not convinced that reexamination will simplify the issues for trial in this case. It is difficult to gauge, at this early stage in the reexamination process, how likely it is that any of RGB?s patent claims will be cancelled or modified through amendment. Furthermore, it is this Court?s experience that the reexamination process may actually complicate a case by creating additional prosecution history estoppel and disavowal arguments that must be addressed during claim construction. To convince this Court that a stay will actually simplify a case, the requesting party must do more than merely proffer oft-cited reexamination statistics and generic judicial efficiency arguments. This Defendants have not done. Accordingly, this factor weighs against granting the stay.

Read/download the order here (link)

Source: DocketNavigator

Full post as published by Two-Seventy-One Patent Blog on April 16, 2009 (boomark / email).