On December 23, 2009, District Judge Barry Ted Moskowitz granted Spectrum’s motion for a stay pending the outcome of ongoing ex parte reexamination of the patent-in-suit, U.S. Patent No. 4,935,184 (‘184 Patent). Citing PTO communications rejecting all reexamined claims in the ‘184 Patent, Spectrum urged that the likelihood that the reexamination would simplify validity and infringement issues was “tremendously high.”

Spectrum further urged that despite the pending reexaminations, Sorensen proceeded to initiate not only the present lawsuit but numerous others, at least 23 of which had been granted stays pending reexamination of the ‘184 patent, in many cases by the present Court. Spectrum also suggested that the statutory mandate of “special dispatch” had been compromised by Sorensen’s petitioning for (and receipt of) multiple extensions of time to respond to each Office Action.

Ultimately, the Court concluded that a stay was appropriate because the litigation was in its early stages, Sorensen had not established undue prejudice, and the reexamination would simplify issues for the Court and save expense for the parties. Moreover, plaintiff could move to vacate if the reexamination did not take a “reasonable” amount of time. The Court further provided that any party could apply for an exception to the stay for “specific, valid” reasons believed to require discovery in order to preserve evidence that would otherwise be unavailable after the stay.

Read the Order: Motion for Stay Pending Reexamination; 2009-12-23; Granted; District Judge Barry Ted Moskowitz; Sorensen v. Spectrum Brands, Inc. et al (3-09-cv-00058) CASD

The Court was evidently not persuaded by Sorensen’s 23 page opposition to the motion, which began: “An ex parte reexamination of a patent is like a baseball game with an undetermined number of innings …[t]his Court cannot predict the final outcome of the ‘184 patent reexamination and it can no longer wait for the game to end.”

The case is Sorensen v. Spectrum Brands, Inc. et al, case number 6-09-cv-00116, in the United States District Court of the Southern District of California. Reexaminations 90/008,976 filed on December 21,2007 and 90/008,775 filed on July 30, 2007.