Case Number: 1:09-cv09790-SC (Dkt. 505)
Judge Conti, having previously awarded damages of over $950K to plaintiffs for defendants' infringement of U.S. Patent No. 5,841,146 (entitled "Reflector"), denied defendants' motion to stay the execution of judgment. Defendants' motion was styled as a motion to stay pending reexamination at the USPTO, but because the court said that as the motion conflated the standard for stay pending reexamination with the standard for stay pending appeal, it would analyze the motion assuming defendants moved in the alternative.
With respect to a motion to stay pending reexamination, the court described the reexamination timeline. The court found it important that defendants filed a request for reexamination with the USPTO "[o]nly a few days before trial," and over four years after this case was filed. The judge considered whether discovery is complete, whether a stay will simplify the issues, and whether a stay would unduly prejudice or present a clear tactical disadvantage to the plaintiff. As the trial was over, the first two factors weighed against a stay. The court also concluded that a stay would prejudice the plaintiffs, because while they initially asserted 15 claims, they dropped all but one to simplify the issues for trial. "Had plaintiffs known that defendants would request reexamination, they might have continued to assert a certain number of other  claims at trial, just in case the PTO found some of the claims invalid and others valid." Accordingly, the court concluded that the pending reexamination did not warrant a stay of judgment.
With respect to a stay pending appeal, the court noted that the defendants had not posted a bond pursuant to FRCP Rule 62(d), which would guarantee a stay of judgment. The court considered (1) whether the defendants were likely to win on appeal, (2) whether denying a stay would irreparably harm defendants, (3) whether a stay will substantially harm plaintiffs, and (4) where the public interest lies. Defendants argued that the first factor weighed for a stay because the plaintiffs did not file an initial statement in the reexamination and because the USPTO had issued an office action canceling the sole claim at issue. The court found those arguments unpersuasive, as the USPTO action was made without any input from the patentee, because the patentee's tactical decision not to file a preliminary statement would not be at issue if defendants had filed their reexamination request four years ago, and because the patent's validity on appeal will be judged using a different standard that will be used at the USPTO. The court also said that defendants only supplied vague information to show irreparable harm, and "appears to speculate on the impact of the judgment." The court found that factors (3) and (4) were neutral, and denied the motion.
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