Intermec countered that any stay at this point, after the parties had engaged in years of litigation including the exchange of expert reports, depositions of 41 individuals, exchange of 24 expert reports, 26 days of expert depositions, and complete briefing of dispositive motions on more than 25 issues, would “reward an attempt to gain a tactical advantage in this litigation by circumventing the Court’s discovery orders” as undue prejudice.  Although this was stated in Intermec’s opposition to the motion, the Court did not explicitly identify these issues in its order.  Rather, the Court simply stated that “[A]fter careful consideration, the Court agrees with the parties that a conditional stay pending the PTO’s determination on the request for reexamination is appropriate. A conditional stay will serve the interests of both parties, as exemplified by each party’s brief on this matter.”

Read Court Order: Motion for Stay Pending Reexamination; 2009-12-23; Granted; District Judge Ralph R. Erickson; Alien Technology Corporation v. Intermec, Inc. et al (3-06-cv-00051) NDD

Thus, the Court ordered the alternative proposed by Intermec (and agreed to by Alien) that the litigation be stayed until February 10, 2010 pending the PTO’s decision whether or not the request raised a substantial new question of patentability. The Court would then enter a partial final judgment, such that Intermec could appeal the non-infringement summary judgment decision if the stay is to be maintained throughout reexamination.

The case is Alien Technology Corporation v. Intermec, Inc. et al, case number 3-06-cv-00051, in the United States District Court of the Southeastern Division of North Dakota. Reexamination 95/001,265 filed November 11, 2009.