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Stay Pending Reexam Granted Where All Claims Amended

By Michael C. Smith

Southwire Co. v. Encore Wire Corp. et al., 6:09cv00289 (E.D. Tex. 11/10/2010)

Judge: Leonard Davis

Holding: Motion for Stay Pending Reexam GRANTED

It always seems to come as a surprise to people that the actual facts of a case affect a court's ruling on motions - even common ones.

In this case defendants sought to stay this case pending reexam.  The Court denied their motion.  Some time later they then refiled their motion, asserting that the facts had changed since the Court's initial denial - and Judge Davis agreed.  "Southwire?s claim amendments and responses during the ?301 patent?s reexamination strongly weigh in favor of staying this litigation. On May 4, 2010, the PTO issued an Initial Office Action rejecting all of the ?301 patent?s claims in Cerro Wire?s ex parte reexamination. In response, Southwire did not attempt to distinguish the prior art over the original claims; instead, it amended all of the independent claims and added three new claims."

Did this matter?  Well, yes.  "Reexamination is not necessarily such an extraordinary circumstance that justifies a stay, and the Court previously denied a stay in this case. However, the specific facts here tip the scales in favor of a stay: Southwire substantively amended the independent claims of the patent-in-suit to
avoid the prior art cited in the reexamination, Southwire has made inconsistent representations regarding the validity of the asserted claims, the Court has not yet construed the claims, and the PTO?s rejection of the parent patent has proceeded to the appeal stage of the reexamination proceedings. Standing alone, these factors do not merit a stay pending reexamination; but in combination they do."

From Docket Navigator.

Full post as published by Eastern District of Texas Federal Court Practice on November 15, 2010 (boomark / email).