Pro-Troll, Inc. v. Shortbus Flashers, LLC, 3-16-cv-04062 (CAND December 23, 2016, Order) (Chhabria, USDJ)
Wednesday, December 28, 2016
Defendant’s Decision to Initiate Reexamination Instead of IPR Warrants Denial of Stay
The court denied defendant's motion to stay pending its request for ex parte reexamination because the lack of potential simplification of issues and undue prejudice to plaintiff weighed against a stay. "Even if the PTO grants the request for an ex parte reexamination of [plaintiff's] patent, the case will not be stayed during that reexamination process. . . . [Defendant] had a choice of applying for ex parte reexamination or inter partes review. The choice of ex parte reexamination was strategically advantageous to [defendant] because the result of the reexamination will have no estoppel effect on [defendant's] arguments here. . . . Thus, the ex parte reexamination process is much less likely to advance the ball in this case. Meanwhile, [plaintiff], which is a direct competitor of [defendant], would be prevented from asserting its patent rights in court for as long as two years, with [defendant] having effectively pressed the pause button on the litigation while hardly needing to lift a finger."