Intellectual Property Law

Joseph J. Farnan: Multiplicity of Prior Art Leads to Stay of Proceedings

By Karen E. Keller, Andrew A. Lundgren et al.

On Friday, District Judge Joseph J. Farnan Jr. granted a request for a stay pending reexamination. While this outcome is not unusual in Delaware, the Court made the notable observation that the sheer number of prior art references at issue made simplification of the case more likely following scrutiny by the PTO:

"[I]t is noteworthy that every claim of both [patents-in-suit] is currently being rexamined by the same PTO Examiner, and that the PTO has already issued an office action rejecting all claims of the '975 patent. Also, inter partes reexamination of the '975 patent was granted in view of thirty prior art references . . . . Ex parte reexamination of the '236 patent was granted in view of fifteen prior art references. In these circumstances, the Court is persuaded that there is a strong likelihood that a stay pending reexamination will simplify the prior art issues and invalidity defenses which are likely to be raised in this action."

Although only one factor in the Court's analysis, the prior art in the aggregate helped persuade the Court that staying the proceedings would be the most efficient course.

Enhanced Sec. Research LLC v. Cisco Sys. Inc., C.A. No. 09-571-JJF (D. Del. June 25, 2010) (Farnan, J.).

Full post as published by Delaware IP Law Blog on June 28, 2010 (boomark / email).