Wednesday, April 7, 2010

Reexam Statistics Favor Denial of Stay Pending Reexam

In denying defendant's motion to stay pending ex parte reexamination, the court concluded that reexamination statistics weighed against a stay. "According to the PTO’s Ex Parte Reexamination Filing Data dated June 30, 2009, upon reexamination all claims in a patent are cancelled 11% of the time and the patent claims are changed 64% of the time. The statistical unlikelihood that the patent will be cancelled weighs in favor of denying the stay. The probability that some of the claims may change after reexamination weighs in favor of staying the case, but that can be handled if and when it occurs."

Gator Tail, LLC v. Mud Buddy, LLC d/b/a Mud Buddy Manufacturing, 3-08-cv-00125 (LAMD April 5, 2010, Order) (Lemmon, J.)


Thomason said...

Suppose this Judge likes his work so much that construing patent claims, which have a 64% chance of being changed on reexam, is not too much to ask.

Rico said...

Or, the Judge has seen from experience that the reexamination process broken. Everyone knows that the PTO has never seen a request for reexam that they didn't like, which in many cases results in nothing more than years of delay in the PTO's prosecution carousel. Put another way, just about any trivial or old question is a "substantial new question". A district court is in a much better position to weigh evidence and dispose of unworthy patents at summary judgment. The reexamination group doesn't have the legal or technical resources to handle the tough technical questions, or the close legal calls.