It’s Still the Trial Judges Who Decide Reexamination Stay Motions

Scott Daniels | February 16, 2012

We were initially excited to see CAFC’s recent order in Synqor v. Artesyn Techs., denying the accused infringer’s motion to stay the appeals, pending completion of inter partes reexaminations of two of the five patent-in-suit.  A jury had found the five patents to be valid and infringed, and awarded damages to the patentee.  In the meantime, the patentee is appealing to the PTO Board of Appeals the reexamination rejection of the claims of two of those patents.  Reexaminations of the other three patents are still pending before the reexamination examiner.

In its motion to the CAFC appeals, the accused infringer argued that those appeals would be best considered once the five reexaminations had been completed.  Judge Moore, speaking for the CAFC, took a hard stance against the accused infringer, characterizing the remaining 10-14 month pendency of the two appeals to the PTO Board as “lengthy” and the requested stay as “unwarranted.”  The possibility of simplification of issues from the reexaminations was not even mentioned.

Despite the fact that the order was non-precedential, one might expect reexamination practitioners to be keenly interested in a glimpse into the CAFC’s attitude toward reexamination stay motions, particularly since a decision on a motion to stay is often the most consequential ruling in a patent infringement action.  And yet, there was generally little interest among the reexamination bar. 

The reality is that it is trial judges who decide reexamination stay motions: the legal standard for ruling on stay motions accords trial judges great discretion, existing CAFC precedent includes holdings (and certainly dicta) justify almost any decision, and appellate reconsideration of stay decisions is rare.  Why would practitioners want a glimpse in the CAFC’s thinking?

In fact, the trial judges’ decisions on reexamination stay motions in the two weeks since Judge Moore’s order have been essentially the same as those issued in the two weeks prior to her order.  Some trial judges continue to focus on the potential prejudice to the patentee from a stay, and they continued to deny stays.  More trial judges focus on the potential simplification of issues resulting from reexamination, and they continued to grant stays.

As was true before the order in Synqor, it is the trial judge who remains of paramount importance.

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