District Court Developments

Scott Daniels | February 15, 2013

Two reexamination issues that frequently face District Court trial judges in patent infringement actions are (1) whether to stay the action pending completion of a parallel reexamination proceeding at the PTO and (2) whether to bar the patent owner’s litigation attorneys from participating in the reexamination.  This week saw interesting examples of both.


In Reiber v. TDK, 2013 U.S. Dist. LEXIS 19658, Judge William Shubb issued the tersest, yet most nuanced stay decision we have ever seen.

Considering the stage of the litigation, the potential simplification of the proceedings, and the potential for undue prejudice or tactical disadvantage to the plaintiffs should a stay issue … the court finds that the balance of the equities favors a stay as to dispositive motions, any Markman hearings, the final pretrial conference, and trial, but does not favor a stay as to discovery, discovery-related motions, and status (pretrial scheduling) conferences.

In a single sentence Judge Shubb identified and analyzed each of the three factors required for determination of whether to stay his case.  He then split the baby in half, suspending the substantive events of the litigation, but allowing discovery between parties to continue.


In EDISYNC SYSTEMS v. ADOBE SYSTEMS, INC., 2013 U.S. Dist. LEXIS 20044, Magistrate Judge Michael Hegarty followed a recent trend among trial judges in deciding whether the patent owner’s litigation may participate in parallel proceedings at the Patent Office.  Judge Hegarty concluded that the litigation may assist in reexamination, but not in prosecution of original applications.

Judge Hegarty explained that claims cannot be broadened in reexamination, but that broadening is possible in prosecution of original applications.  This possibility of an applicant broadening its claims increases the risk that the litigation attorneys might improperly use confidential information obtained from the defendant under the protective order, to cover the defendants’ future products.  That risk is much less in reexamination.

The Judge concluded that he did “not find good cause for extending the prosecution bar to reexaminations [since] reexamination is distinct from prosecution in several material way … [W]hile prosecution permits the broadening of claims to allow ‘new, tailor-made infringement allegations,’ reexamination amendments can only serve to narrow the original claims.”(Citations omitted). No details may be added during reexamination unless they already exist in the original patent’s specification.”

Still, the Judge did condition the litigation attorney’s participation in the reexamination “on an acceptance of an express legal obligation not to rely on confidential information during reexamination provides a measure of additional protection.” He therefore modified “the proposed Protective Order to expressly prohibit use of the confidential information in any present or future reexamination activities.”

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