Judge Ward Refuses to Stay Permanent Injunction Despite Pending Reexaminations

Scott Daniels | January 28, 2011

On Monday, Judge John Ward of the Eastern District of Texas rejected defendants’ argument in SynQor v. Artesyn, 2011 U.S. Dist. LEXIS 6439 that a permanent injunction against future infringement should be stayed because of pending reexaminations of the patents-in-suit. 

Judge Ward had issued the injunction after a jury found that defendants had infringed each of the patents.  A series of motions for judgment as a matter of law were pending.  Defendants argued that developments in copending reexamination proceedings justified staying the injunction: the PTO had found a substantial new question of patentability for each of the claims asserted at trial; six of the ten asserted claims had received non-final rejections; none of the asserted claims were found to be patentable; and the claims of one of the patents were found to be entitled to priority only as of the patent’s actual filing date. 

Defendants argued from these facts that it is unlikely that the patentee would prevail on appeal and that a permanent injunction was therefore inappropriate.  Judge Ward disagreed, finding that “such preliminary and insignificant steps in the reexamination process do not warrant a stay of the injunction.”

Judge Ward’s rejection of defendants’ argument may not be surprising.  What is interesting, however, is the implication in his comment that rejections in copending reexamination proceedings could reach a point of “finality” or “significance” where they might justify a court’s refusal to grant an injunction in favor of a patentee that had prevailed at trial.  At this time, a few judges have shown a willingness to defer to reexamination results from the PTO, notably Judge James Cohn of the Southern District of Florida in Flexiteek Americas v. PlasTEAK  Nonetheless, there appears to be a shift in attitude among a number of judges in accepting at least the possibility of deference to the PTO on the issue of validity.

One might also conclude that the reexaminations should have been requested earlier, but hindsight is 20:20.

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