On October 15, 2009 Judge Henry E. Hudson denied a motion to stay proceedings pending reexamination of the patents-in-suit in the District Court for the Eastern District of Virginia in the matter of Pre Holding, Inc. v. Monaghan Medical Corporation, et al.   The case involves U.S. Patent No. 7,562,656.   The Court noted that 35 U.S.C. 318 indicates that a stay may be obtained once an order for inter partes reexamination has been issued.  Because the PTO had not yet issued an order granting the reexamination request, the Court concluded that a stay was premature. Read the Order (PDF): Motion for Stay Pending Reexamination; 2009-10-15; Denied; District Judge Henry E. Hudson; PRE Holding, Inc. v. Monaghan Medical Corporation et al (3-09-cv-00458) VAED

Notably, reexamination control number 95/001,216, associated with Monaghan Medical Corp.’s request, was issued a “Notice of Incomplete” by the Central Reexamination Unit (CRU) the same day their motion to stay was denied. Read the notice specifying non-compliance with 37 C.F.R. 1.915(b) dated October 15, 2009 (PDF): 95001216 – Notification of Incomplete Inter Partes Reexam Request – Dated 10-15-2009. In setting forth the reasons for vacating the filing date, the CRU specified that the request failed to “clearly and separately identify” each proposed new rejection, known as “lumping” of multiple proposed grounds. See, Mistakes to Avoid, No. 2. To cure the defect, the Office advised that the requester choose the most relevant proposed rejections and withdraw any remaining which are not “clearly and separately” identified.

The Case is Pre Holding, Inc. v. Monaghan Medical Corporation, et al., case number 3:09CV458-HEH, in the United States District Court of the Eastern District of Virginia.