Scott Daniels | January 13, 2012
Trial judges uniformly apply the same standard to decide whether to stay an infringement action pending completion of a reexamination of the patent-in-suit. And yet, the decisions of individual judges vary enormously: judges for whom potential simplification is appealing tend to grant stays, whereas judges more concerned with potential prejudice to the patentee tend to deny them. The main impediment to more uniform treatment of stay motions is the difficulty that a losing party faces in obtaining review by the CAFC of the grant or denial. That difficulty was illustrated by Judge Linn’s denial of a mandamus petition in In re SDI Technologies.
There, Bose sued five companies – including Memorex – for infringing a patent related to sound reproduction systems. In November 2009, one of the defendants requested reexamination of Bose’s patent. After reexamination was granted, the initial trial judge stayed the case “as long as [the] PTO proceedings were not taking too long.” Bose later asked that the stay be lifted in view of the length of the reexamination, but the second judge in the case decided to continue the stay “until resolution of summary judgment motions based at least in part on the prior art before the PTO in the reexamination.” The judge eventually denied the summary judgment motions and refused to continue the stay.
Defendants then petitioned for writ of mandamus from the CAFC, asking that the trial judge be required to stay the infringement action. Judge Linn, speaking for the panel, denied the petition. He began by noting “the exacting standard required for mandamus” and the discretion accorded to trial judges in ruling on stay motions. Here, the defendant “fails to provide any authority that would demonstrate a clear and undisputable right to relief.” He added that the possibility “that a petitioner [might] suffer hardship, inconvenience, or an unusually complex trial does not provide a basis for a court to grant mandamus.”
Not mentioned in Judge Linn’s opinion is the fact that all the patent claims have been rejected and are now on appeal at the PTO Board. Given that status, a stay of the infringement action might have been appropriate. And yet, because of the extremely high standard for challenging the discretion of the trial, review of stay orders is nearly impossible.