Intellectual Property Law

Chief Judge Gregory M. Sleet: Motion to Lift Stay Pending Reexam DENIED

By Karen E. Keller, Andrew A. Lundgren et al.

More and more frequently, courts are having to deal with concurrent reexamination proceedings in the USPTO while parties are litigating the same patents in the district court forum. In Automotive Technologies Int'l, Inc. v. American Honda Motor Co., et al., certain defendants filed a reexamination on eight of twelve of the patents that plaintiff asserted against them in litigation filed in the District of Delaware and subequently moved to stay the litigation. C.A. Nos. 06-187-GMS, 06-391-GMS, Memo. Order (D. Del. Sept. 15, 2009). This Court granted the motion to stay. Over a year and a half later, the PTO reissued two of the patents-in-suit and reaffirmed certain claims without amendment. Id. at 2. Because of this action at the PTO, the plaintiffs moved the court to lift the stay. The Court denied the motion finding that because "reexamination proceedings are still underway for six of the eight asserted patents" and "all of the claims presently asserted against the defendants stand rejected by the PTO" lifting the stay was not appropriate. Id. at 4. The Court further found that continuing the stay could simplify the issues for trial and conserve both the parties' and the Court's resources. Id. at 4.

Automotive Technologies Int'l, Inc. v. American Honda Motor Co., et al., C.A. Nos. 06-187-GMS, 06-391-GMS, Memo. Order (D. Del. Sept. 15, 2009).

Full post as published by Delaware IP Law Blog on September 17, 2009 (boomark / email).