Facebook Infringement Case Stayed Prior to Reexamination Grant

Scott Daniels | October 14, 2011

Trial judges continue to apply their individual concepts of fairness to motions to stay infringement actions pending completion of co-pending reexaminations of the patents-in-suit.  Accordingly, there is wide variation in how such motions are treated.  On Tuesday, for instance, Judge Edward Davila of the Northern District of California granted a stay motion in Pragmatus AV. v. Facebook, 2011 U.S. Dist. LEXIS 117147, despite the fact that the PTO had not yet determined whether to grant reexamination.   

Judge Davila emphasized the prospect of simplification of issues, relying heavily on the PTO statistics showing that a substantial percentage of reexamination requests are granted and that a substantial percentage of patents in reexamination result in claims being canceled or amended.  The Judge therefore found that “Facebook’s request[s] for reexamination include[] all claims at issue in this litigation and there is a high statistical likelihood that reexamination will be granted and the claims will either change or be canceled,” thereby simplifying issues for trial. 

Judge Davila acknowledged that reexamination had not yet been granted, but reasoned that the stay could be readily lifted if reexamination is denied.  The Judge added that “it is not uncommon for this court to grant stays pending reexamination prior to the PTO deciding to reexamine the patent.”  Taking into account all the factors, he decided to stay the case.

In another interesting case – Infinity Computer Prods. v. Brother Int’l – Judge Legrome Davis of the Eastern District of Pennsylvania also examined the PTO statistics, but this time the statistics on the average length of pendency of reexaminations, instead of outcomes.  First, Judge Davis questioned whether such statistics were an accurate predictor of how long the PTO would take to resolve a specific reexamination.  He then noted that in this reexamination the PTO had granted the request and issued its rejection more quickly than the averages.  “All this leads us to believe is that the USPTO is diligently working through the reexaminations of the patents-in-suit, and that these reexaminations may well be completed more quickly than the ‘average’ ex parte reexamination (26.3 to 31.8 months in 2011).” 

Again, reexamination granted, but for totally different reasons.


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