Final office action rejecting claim sufficient to support stay pending appeal

Briese Lichttenchnik Vertriebs et al. v. Brent Langton, et al.

Case Number: 1:09-cv-09790-SC-MHD

In 2013, a jury found the four defendants liable for infringement of U.S. Patent No. 5,841,146 (“Reflector”). The defendants appealed to the Federal Circuit and filed for a reexamination of the patent. In the instant action, they requested a stay of execution of judgment pending the reexamination. Judge Conti noted that the USPTO had issued a final office action in the reexamination, cancelling the only claim at issue, but he also noted that the appeal at the USPTO “could take years.” As none of the factors to be considered for a stay pending reexamination (timing of the request with respect to trial, simplification of the trial, and undue prejudice to the non-moving party) counseled a stay pending reexamination, Judge Swain refused the motion.

But, the court found, the claim’s cancellation in the USPTO’s final office action did “change the calculus with regard to a stay pending appeal,” as it established that there was a likelihood that the defendants would succeed on appeal. The court also noted that the plaintiffs had offered to stipulate not to enforce any judgment until the appeal to the Federal Circuit is completed. Accordingly, the court stayed execution of judgment until the appeal is decided.

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