Scott Daniels | September 1, 2010
The reexamination process concludes with the PTO issuing a “Notice of Intent to Issue a Reexamination Certificate” (a NIRC). About three months pass, and then the PTO issues the actual reexamination certificate. If the patent has been involved in a law suit that has been stayed pending completion of the reexamination, the patentee typically waits until receipt of the reexamination certificate (assuming that it has been successful in the reexamination), to apply to the court to lift the stay.
In her recent decision in JAB Distributors, LLC v. London Luxury, LLC, 2010 U.S. Dist. LEXIS 88806 (N.D. Ill. June 29, 2010), Judge Amy J. St. Eve concluded that the patentee need not wait for the certificate to issue; rather, the NIRC date may be the appropriate date to resume the litigation.
There, Judge St. Eve had stayed the case for the reexamination, citing the lack of prejudice to the patentee, likely simplification of the issues, and reduction of litigation burdens. The PTO later issued a NIRC, and the patentee petitioned the court to lift the stay. Judge St. Eve did so, even though the reexamination certificate had not yet issued.
She explained that the original justification for the stay no longer existed. “Because the PTO is unlikely to reconsider its reexamination decision and subsequently simplify the issues or reduce the burden of litigation, staying the case is no longer appropriate.” Judge St. Eve cited the wording of the NIRC that prosecution is “closed” and that a reexamination certificate “will be issued.” Although the PTO retains jurisdiction over the reexamination until the certificate issues, the PTO is unlikely to change its decision regarding the validity of the claims.