Blog July 6, 2021
N.D. Ga. Refuses to Lift Stay Pending IPR, Despite Conclusion of Reissue and Reexamination
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The patent office's post-grant review proceedings, including Inter Partes Reviews, continue to impact Courts' handling of their dockets, frequently leading to stays. The Northern District of Georgia is not immune to this effect, even where lengthy stays can result.
In Barco, N.V. v. Eizo Nanao Corp., Judge Timothy Batten, Sr. originally stayed the case in view of an ongoing reissue proceedings the plaintiff had initiated shortly after filing the case in 2011. Because the reissue application added seventy-eight new claims, the Court cited the potential new scope of the patent as justifying a stay.
Once the patent emerged from reissue, the plaintiff unsuccessfully moved to lift the stay in late 2012. The Court denied the motion based on the defendants' 2012 petition for inter partes reexamination of the pre-reissue patent, citing the advantages to deferring to the PTO's expertise regarding the patent's validity.
Next, the plaintiff amended its complaint to drop the original patent and instead assert the reissued patent. The defendants then filed an IPR petition challenging the validity of the reissued patent. Because the reissue proceeding and inter partes reexamination have since concluded, the plaintiff once again sought to lift the stay. Notably, the plaintiff even offered to drop from litigation the claims still at issue in the IPR, asserting only claims that have survived challenge at the PTO.
Despite the lengthy stay and the plaintiff's offer to forgo litigating the claims challenged in the IPR, Judge Batten again refused to lift the stay. Citing the overlap of claim language, the Court found the resolution of the IPR likely to simplify the remaining issues before the Court, including claim construction and infringement issues. The Court also found persuasive that the IPR proceeding must be complete by July 2015, meaning little prejudice could result from the continued stay.
Notably, the Court emphasized the PTO proceedings' value in streamlining the issues to be litigated:
Proceedings in the PTO to this point have resulted in reissue of the patent, cancellation and amendment of multiple claims by Barco, a significant change in the scope of claims, and a narrowing of issues to be presented in this Court.
Barco thus illustrates the tremendous impact patent office proceedings can have on district court litigation. The case further underscores that post-grant review proceedings are a critical arrow in the quiver of today's patent litigator that cannot be overlooked when formulating a litigation strategy.
The opinions expressed are those of the authors on the date noted above and do not necessarily reflect the views of Fish & Richardson P.C., any other of its lawyers, its clients, or any of its or their respective affiliates. This post is for general information purposes only and is not intended to be and should not be taken as legal advice. No attorney-client relationship is formed.
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