Judge Robinson Comments on Reexamination Pendency Periods

Scott Daniels | September 7, 2010

Trial court decisions on motions to stay a patent case pending completion of reexamination have become common place and do not normally attract attention.  Judge Sue Robinson’s denial of a motion to stay last Thursday in Belden Technologies Inc. v. Superior Essex Communications LP, however, included some noteworthy analysis of the length of reexamination proceedings.

Judge Robinson duly noted the statistic published by the PTO, that inter partes reexamination has an historical average pendency of 31.4 months.  But this average is only part of the story; a judge must also consider the time required for an appeal. “In 2009, the PTO averaged 840 days between the filing of a request for reexamination and the issuance of [Right of Appeal Notice], 649 days between the issuance of [Right of Appeal Notice] and the subsequent docketing of the appeal, and an additional 234 days between the docketing and the rendering of a” PTO Board of Appeals decision.  The actual pendency of a reexamination, taking the appeal to the Board into account, is thus twice as long as the published statistics would suggest.

Judge Robinson concluded from this data that “the docketing of the reexamination appeal serves as a minimal benchmark that would weigh in favor of a stay.”  In other words, a docketed appeal in the reexamination would weigh in favor of staying the District Court case, whereas a reexamination where no appeal had yet been docketed would weigh against a stay.

In the present case, where the patentee Belden has not yet received a Right of Appeal Notice, the reexamination may last another three years.  Judge Robinson therefore found that “this factor cuts against the grant of a stay.”

Of course, denial of Superior’s motion to stay was certainly to have been expected – discovery had been completed, significant claim construction and summary judgment rulings had been issued, and the stay motion was filed eleven days before the start of trial.

Incidentally, Judge Robinson offered the interesting aside that reexamination is “an emerging trend in patent litigation.”  Whether she approves or disapproves of that trend, is not clear.

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