Tuesday, February 1, 2011

Statutory Mandate to Conduct Reexamination "With Special Dispatch" Afforded "Minimal Weight" in Stay Analysis

Defendants' motion to stay pending inter partes reexamination was denied based upon the progress of the reexamination compared with the case. "Although some district courts justify staying a patent case based on the federal statute requiring that PTO reexaminations be 'conducted with special dispatch,' this court affords minimal weight to such statutory provision as the undeniable reality is that even if the PTO promptly responds to all filings, the parties often request extensions and the reexamination process frequently takes several years to complete. . . . Here, the PTO reexamination was filed less than six months ago, and the PTO reexaminer has only recently issued a 'first office action.'. . . As for the instant litigation, the complaint was filed nearly a year ago, a Markman hearing has been conducted, significant discovery has been completed. . . and a trial is scheduled to begin in approximately three months."

Osmose, Inc. v. Arch Chemicals, Inc., et. al., 2-10-cv-00108 (VAED January 28, 2011, Order) (Friedman, J.)

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