On December 15, 2009, District Judge Maxine M. Chesney granted KTI’s motion to stay pending resolution of inter partes reexamination of the patent-in-suit, U.S. Patent No. 7,127,631 (’631 patent) associated with control number 95/000,501 filed on October 3, 2009. According to the PTO website, the 70 page request, raising fourteen 14 prior art references not previously considered by the PTO, was granted by the Examiner December 29, 2009.

In deciding whether to stay litigation, the Court considered the customary factors of undue prejudice or tactical disadvantage to the non-moving party, simplification of issues or trial, and whether discovery is complete or the trial date set (See Stays). Read Court Order: Motion for Stay Pending Reexamination; 2009-12-15; Granted; District Judge Maxine M. Chesney; Advanced Analogic Technologies, Inc. v. Kinetic Technologies, Inc. (3-09-cv-01360) CAND

First, it reasoned that AATI failed to provide any evidence that “memories may fade” or evidence would be lost as a result of delay, stating that delay in and of itself does not constitute prejudice. Even though both parties agreed that the average time to complete a proceeding before the PTO may take as much as three years, AATI’s projection to appeal any adverse decision to the Federal Circuit indefinitely by raising a defense of “assignor estoppel” was merely speculative.

The Court seemed persuaded by statistics cited by KTI in its motion to stay that most reexamination proceedings resulted in canceling or altering of one or more of the claims at issue, concluding that such an outcome would likely narrow and clarify the issues for construction and trial. Last, since discovery was in its early stages, a trial date set for more than fifteen months in the future, no briefing on the merits of claim construction and no dispositive motions filed, the Court found all factors weighed in favor of granting a stay.

The case is Advanced Analogic Technologies, Inc. v. Kinetic Technologies, Inc., case number 3-09-cv-01360, in the United States District Court of Northern District of California.