Federal Judiciary

Motion for Stay Pending Reexamination Granted with Modifications

By Michael Smith

Today Judge Folsom issued orders on the defendants' motions for stay pending reexamination in the Premier v. HP and Premier v. Microsoft cases.  (2:07cv 395 and 396 - docket no's 104 and 234 respectively).  Judge Folsom wrote that "[a]ll three Soverain factors weigh in favor of a stay; however, the Court determines that a stay should be counterbalanced with an appropriate stipulation so that neither side will be prejudiced by the other side getting ?two bites at the apple.?"  Accordingly, the order provided:

It is further ORDERED that within fourteen (14) days, Defendants shall either (1) file with the Court a signed copy of the following stipulation, or (2) notify the Court in writing of their decision not to sign the following stipulation:

As a condition of the stay, Defendant may not argue invalidity at trial based on one or more prior art printed publications that were submitted by Yahoo! or those provided by Apple, either to the PTO directly or to Premier during the Apple litigation, in the reexamination proceedings, as well as, those prior art printed publications submitted in any newly requested reexamination process. However, Defendant will be permitted to rely for obviousness on the combination of printed publication references that were submitted by petitioner in the reexamination with prior art that was not so submitted. Any Defendant seeking a request for reexamination must do so within ninety (90) days of filing its stipulation.

It is further ORDERED that as to each Defendant entering into the stipulation, a stay of all proceedings shall ensue.

Full post as published by Eastern District of Texas Federal Court Practice on May 19, 2008 (boomark / email).