Scott Daniels | December 1, 2010
On Monday we reported very favorably on Judge Padova’s decision in Cross Atlantic Capital Partners v. Facebook, 2010 U.S. Dist. LEXIS 124120, to lift a reexamination stay once the examiner files an answering brief on appeal to the PTO Board.
In a slightly different context Judge Claude Milton of the Eastern District of Virginia came to a similar conclusion in 01 Communique Lab. V. Logmein, Inc., et al. 2010 U.S. Dist. LEXIS 125513: he denied the motion of the accused infringer to stay the case pending a reexamination where the examiner’s confirmation of the validity of the claims was now on appeal. Judge Milton explained that “the chances of [the] BPIA reversing the PTO are remote. Moreover, awaiting a final confirmation from the BPAI could take years.”
Thus, at least two District Court judges have come to the conclusion that a stay pending reexamination makes sense, but not a stay pending a Board appeal of a reexamination. Both judges have frankly acknowledged the conflicting factors at play and attempted to balance those factors. Of course, each case raises its own considerations.