Patent Law Practice Center

Rubbing The Court The Wrong Way In Seeking A Stay Pending Patent Reexamination

Reexamination can be an extremely useful alternative case management strategy.  More and more, litigants are using Reexamination to derail a litigation or limit damage exposure. Potential benefits of patent reexamination for defendants include providing an opportunity to stay concurrent litigation, creating an intervening defense, and providing additional prosecution history for a later claim construction ruling.  For Patentees, patent reexamination may provide a mechanism to add new claims to hedge against invalidity, avoid time consuming reissue proceedings, and target specific claims for reexamination/amendment while insulating others. Oblon Spivak Partner and Practice Center Contributor Scott A. McKeown, sent along this article he wrote with colleague Stephen G. Kunin for Patents Post Grant Blog.  The article discusses the litigation between 3M Innovative Properties Co., et al. and Envisionware, Inc., wherein Envisionware was seeking a stay pending patent reexamination.

On August 20, 2010, a motion to stay the litigation between 3M Innovative Properties Co., et al. and Envisionware, Inc. (0-09-cv-01594) (NDM) pending the outcome of a parallel patent reexamination was denied. At issue in the litigation are three of 3M’s patents relating to RFID technology, namely 6,232,870, 6,486,780 and 6,857,568. Envisionware requested inter partes reexamination of the ‘780 and ‘568 Patents. Curiously, since the third patent, the ‘870 Patent does not qualify for inter partes reexamination, reexamination of this patent was not sought at all. A non-final office action rejecting  the ’568 Patent claims was issued by the USPTO, the ‘780 Reexamination has yet to begin. On August 2, 2010, Envisionware filed the motion to stay the litigation. (more…)