On December 14, 2009, District Judge David Folsom denied SAP’s motion to stay pending ex parte reexamination of U.S. Patent No. 6,141,653 (‘653 patent) and inter partes reexamination of U.S. Patent No. 7,162,458 (‘458 patent), the two-patents-in-suit. As argued by SAP, both had been issued final office actions rejecting all asserted claims. Sky filed a response to the ex parte action with Notice of Appeal to the BPAI on September 30, 2009 and Right of Appeal Notice is expected to issue in the inter partes proceeding.

Read Court Order: Motion for Stay Pending Reexamination; 2009-12-14; Denied Without Prejudice; District Judge David Folsom; Sky Technologies LLC v. SAP AG et al (2-06-cv-00440) TXED

SAP filed its motion to stay on November 12, 2009, less than a week after the civil litigation was reopened following resolution of a well-known interlocutory appeal to the United States Court of Appeals for the Federal Circuit on an issue of assignment. See, Sky Techs. LLC v. SAP AG (Fed. Cir. 2009).

Sky filed a sealed reply to SAP’s motion and Judge Folsom concluded that the status of these reexaminations would be better ascertained closer to October 2010, the next available trial date. The Court could not find sufficient reason to stay because discovery closed and the case was already being readied for trial when SAP filed the interlocutory appeal. Thus, with little discussion of the factors conventionally used to determine whether to grant a stay, defendants’ motion was denied without prejudice subject to “re-filing if and when appropriate.”

The case is Sky Technologies LLC v. SAP AG et al, case number 2-06-cv-00440, in the United States District Court of Eastern District of Texas. Reexaminations associated with the two-patents-in-suit are 90/010,139 and 95/001,037, both filed on April 10, 2008.