Monday, November 15, 2010

Amendment of Claims During Reexam Warrants Stay of Litigation Even Among Direct Competitors

Defendants' renewed motion to stay pending ex parte reexamination was granted because plaintiff amended all of its independent claims during the reexamination proceeding and added new claims in response to the PTO's initial rejection. "[T]he PTO issued an Initial Office Action rejecting all of the [patent-in-suit's] claims in [defendant's] ex parte reexamination. In response, [plaintiff] did not attempt to distinguish the prior art over the original claims; instead, it amended all of the independent claims and added three new claims. . . . Given [plaintiff's] decision to amend its claims in response to the PTO’s Initial Office Action, the [patent-in-suit's] reexamination will result in amended claims with different scope and limitations than the claims currently at issue. . . . Thus, [plaintiff's] substantive claim amendments during reexamination strongly favor staying this litigation. . . Generally, the prejudice of staying [plaintiff's] claims against its direct competitors weighs heavily against a stay; however, [plaintiff's] decision to submit substantive claim amendments during the [patent-in-suit’s] reexamination neutralizes this prejudice. [Plaintiff] is not prejudiced by a stay of patent claims that it is attempting to change."

Southwire Co. v. Encore Wire Corp. et al.,
6-09-cv-00289 (TXED November 10, 2010, Order) (Davis, J.)

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