Judge Attempts to “Synchronize” Trial Schedule and Reexamination Proceeding

Scott Daniels | December 9, 2010

Trial judges face a difficult task when asked to balance the competing interests of a patentee entitled to speedy resolution of its infringement claim and the obvious desirability of waiting for the PTO to complete its reexamination of the validity of the patent.  Judge Greg Kays of the Western District of Missouri may have hit on an approach that could appeal to other judges.  Essentially, he plans to lift his order that had stayed the case pending completion of a reexamination, but also to set a trial date that is likely to occur after completion of the reexamination. 

Earlier in Kinedyne Corp. v. Multiprens USA, Inc., Judge Kays stayed the case pending completion of a reexamination requested by the accused infringer “to conserve judicial resources while allowing the PTO to conduct reexamination.”  The reexamination has reached something of a milestone: the examiner has confirmed the patentability of the claims of one patent and the dependent claims of a second patent, but maintained a rejection of the independent claim of that second patent.  According to the Judge, this posture of the reexamination does not constitute a “material change of circumstances,” but he “does not intend to leave the stay in place indefinitely.” 

Judge Kays has therefore ordered the parties to report on the status of the reexamination early next month.  If there is “no material change in the status of the reexamination necessitating extension of the stay, the Court will lift the stay sua sponte…”   The parties would then be required to propose a trial date “at a time when there is a substantial probability that the PTO will have completed its reexamination.”  This synchronization of the litigation and reexamination schedules would certainly conserve judicial resources, but may be less helpful to the private parties.

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