Unbind Ltd. and Peleman Industries, Inc. v. Provo Craft and Novelty, Inc., 1:08-CV-3713 (N.D. Ga Feb. 27, 2009, Order) (Evans, J.), where the court granted defendant’s motion to stay litigation pending its request for reexamination, which the USPTO had not yet granted or denied.  The court considered three factors in deciding whether to grant the stay: (1) whether a stay would unduly prejudice or present a tactical disadvantage to the nonmovant; (2) whether a stay would simplify the issues in the case; and (3) whether discovery was complete and/or a trial date had been set.  Defendant argued that the factors weighed in favor of granting the stay, while plaintiff argued, in part, that defendant’s motion for a stay was premature because the USPTO had not granted the request for reexamination.  In granting defendant’s motion for a stay, the court reasoned that plaintiff suffered no prejudice that could not be remedied by monetary damages, and that both parties would be prejudiced if the USPTO amended the claims in plaintiff’s patent, thus wasting both parties’ time and expense on discovery and pre-trial proceedings based on outdated claims.  The court then stated, “If the reexamination results in a determination that the patent is invalid, this case will be moot.  If the reexamination results in a determination that the patent is valid, that determination will be admissible and the patent will have a presumption of validity.”

Unbind Ltd. and Peleman Industries, Inc. v. Provo Craft and Novelty, Inc. (pdf)