Friday, October 11, 2013

Examiner’s Track Record on Appeal Favors Stay of Litigation

The court granted defendant's renewed motion to stay pending inter partes reexamination because the undue prejudice to plaintiff was now outweighed by the potential simplification of issues. "[T]he principal factor weighing in favor of staying this action is that the USPTO has now rejected all claims of the [patent-in-suit] as obvious not once, but twice. The second rejection -- on multiple, independent grounds -- materially impacts the likelihood that the USPTO will ultimately invalidate the [patent]. Plaintiff must overcome seven separate grounds for rejection set forth by the Examiner in this case, who the Court notes has at least 12 years of experience at the USPTO, has experience handling inter partes reexaminations such as this one, and has never been reversed on appeal. . . . The Court weighs this significant risk of prejudice and expenditure of resources against the fact that [plaintiff] only seeks money damages in this action -- not injunctive relief -- and has already been granted the ability to take the trial depositions of any elderly inventors in the interim." Baseball Quick, LLC v. MLB Advanced Media. L.P., et. al., 1-11-cv-01735 (NYSD October 9, 2013, Order) (Forrest, J.)

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