On November 20, 2009, District Judge Joel A. Pisano granted defendant Kobo Products’ motion to stay pending the outcome of an ex parte reexamination of one of the two patents-in-suit, U.S. Patent No. 5,366,660 (’660 Patent). The request for reexamination was filed December 31, 2008 and received a final office action on October 22, 2009 finally rejecting all subject claims. The second patent-in-suit U.S. Patent No. 5,599,529 (’529) has expired.

Read the Court Order: Motion for Stay Pending Reexamination; 2009-11-20; Granted; District Judge Joel A. Pisano; ICI Uniqema Inc. v. Kobo Products, Inc. (3-06-cv-02943) NJD

After considering arguments raised by Kobo in their motion and opposed by Uniqema, the Court concluded to grant the stay pending reexamination.  The Court reasoned that (1) the plaintiff did not show that it would suffer undue prejudice as a result of delay; (2) a stay would have significant potential to simplify the issues (e.g., eliminate, narrow, or clarify key areas of dispute); (3) a stay would prevent resources from being expended on invalid or amended claims; and (4) the reexamination may provide valuable analysis to the Court. The Court reasoned that despite the fact that a Markman hearing had already occurred, since fact and expert discovery would not conclude for some time, the stage of the litigation also favored granting the stay.

The case is ICI Uniqema Inc. v. Kobo Products, Inc., case number 3-06-cv-02943, in the United States District Court of New Jersey. The ‘660 Patent is associated with reexamination control number 90/010,376 (filed 12-31-2008).