Patent Law Practice Center

Deciding Whether To Stay A Case Pending Reexamination

Scott Daniels, Partner at Westerman, Hattori, Daniel & Adrian and Practice Center Contributor, sent in this article discussing the standard applied by trial judges when determining whether to stay a patent infringement case pending reexamination.  According to the article, rather than applying the “universally accepted standard” of clear and objective, the standard is commonly applied in an extremely subjective manner. Daniels examines whether the problem is with the trial judges or with the standard itself.

The universally accepted standard for a court to determine whether to stay a patent infringement case pending completion of a reexamination proceeding is clear and seemingly objective.  A court is to apply its discretion in light of the following factors:

(1)   whether discovery is complete and a trial date is set, i.e., is the case in its early stages;

(2)   whether reexamination would likely simplify, or perhaps eliminate, issues from the litigation; and

(3)   whether a stay would unduly prejudice the patentee, or whether the stay is requested by the accused  infringer for some tactical reason.

Yet the standard is commonly applied in an extremely subjective manner, so that a number of practitioners have commented that the identity of the judge is the best predictor of the outcome of a stay motion. (more…)