Second Stay Pending Ex Parte Reexamination Granted After “New” Prior Art Surfaces (COD)

sterne — Thu, 05 Nov 2009 18:52:53 +0000

On November 5, 2009, Judge Wiley Y. Daniel granted a second stay pending reexamination in a case pending for more than six years during which time ex parte reexaminations involving the patents-in-suit U.S. Patents Nos. 6,411,965 (‘965 Patent) and 5,799,320 (‘320 Patent) had concluded. The first round of ex parte reexaminations resulted in cancellation of all claims in the ‘965 Patent, cancellation of all original claims in the ‘320 Patent, and introduction of a new set of claims to the latter deemed patentable over cited prior art. On May 7, 2009, Centra filed a new request for reexamination on the claims appearing in the newly issued reexamination certificate for the ‘320 Patent based on “new” prior art, which the USPTO granted on August 28, 2009. The second motion to stay pending reexamination was therefore based on Centra’s assertion that at some point during the initial reexamination proceedings, it unearthed additional prior art “similar to that relied upon in its reexamination request” but never considered by the patent examiner during the original reexamination proceedings. Read the USPTO Order Granting the Request: 90010532 – Order Granting Request for Ex Parte Reexamination – Mailed 08-28-2009

EdiSync objected to the stay in that it would suffer “extraordinary prejudice” by the potential delay caused by a stay pending reexamination, maintaining that this request is part of a “larger delay tactic” on the part of Centra in view of the fact that the ‘320 Patent is set to expire in 2015. The parties briefed the issue of “pre-reexamination certificate liability” as to the ‘320 Patent on September 3, 2009. At that time, the issue before the Court was whether the new set of claims issued in the ‘320 Patent reexamination certificate were “substantially identical” to the original ‘320 Patent claims. If the new claims were not “substantially identical” then Centra would not be liable for alleged infringement occurring prior to issuance of the reexamination certificate, therefore controlling the outcome of any subsequent infringement analysis.

In weighing the factors of simplification, status of discovery, prejudice to the nonmoving party, and issues of judicial economy, Judge Daniel concluded that: “[G]iven the technical nature of the patent claims in question in this case along with Centra’s assertion of invalidity based on newly-cited prior art, I find that the expertise of the PTO will benefit me.” The Court further noted that that the parties are not in direct competition with each other, that Edysinc will be able to seek damages against Centra regardless of the length of any stay or the length of the second reexamination request, and declined to acknowledge any clear tactical advantage to Centra. Read the Court’s Order Granting the Stay: Motion for Stay Pending Reexamination; 2009-11-05; Granted; District Judge Wiley Y. Daniel; Edisync Systems Inc v. Centra Software Inc, et al (1-03-cv-01587) COD

The case is Edisync Systems Inc v. Centra Software Inc, et al, case number 1-03-cv-01587, in the United States District Court of Colorado.

The Reexamination Center » District Court – COD

Second Stay Pending Ex Parte Reexamination Granted After “New” Prior Art Surfaces (COD)