Tuesday, September 3, 2013

Institution of Reexam Instead of IPR Does Not Suggest Dilatory Motive

The court granted defendant's motion to stay pending ex parte reexamination and rejected plaintiff's claim of undue prejudice based on defendant's choice of ex parte reexamination instead of the new inter partes procedure. "According to Plaintiff, the Defendants' motion to stay is 'a tactical move to push [it] to settle this dispute.' Plaintiff, however, has failed to show that Defendants requested ex parte reexamination or filed the instant motion for the purpose of delaying this action. . . . Defendants are legally entitled to invoke the reexamination process. The fact that Defendants have done so does not in and of itself suggest a dilatory motive. . . . Moreover, there is no evidence before the Court demonstrating that the new inter partes review process is actually 'quicker' than the ex parte reexamination process. . . . While the new inter partes review process is normally required to be completed not later than a year after the PTO notices the institution of a review, see id., the statutory scheme contemplates that the review process (filing date to certificate issue date) may take up to 24 months to complete before any appeal is filed."

Internet Patents Corporation v. eBags, Inc. et al, 4-12-cv-03385 (CAND August 28, 2013, Order) (Armstrong, J.).

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