The defendants initially requested the stay based on their filing of a Request for Ex Parte Reexamination of U.S. Patent No. 5,990,405 (the “‘405 patent”), which is the only patent asserted by the plaintiff.  The ‘405 patent is directed to “systems and apparatuses for electronically simulating participation in a musical performance.”  In its complaint, Gibson alleged that that the defendants infringed the ‘405 patent by developing and/or selling the popular Guitar Hero® and Rock Band™ video games, as well as various components sold separately and together with the games.

In addition to noting that a stay pending reexamination would promote judicial economy by simplifying or eliminating validity issues during the litigation, the defendants pointed out several factors unique to their case that favored a stay.  First, the litigation was in its early stages when the stay was requested.  The request for reexamination was filed on April 24, 2008, just over a month after the defendants were served with the Complaint, with the Motion to Stay following shortly thereafter on May 7, 2008.  As a result, the defendants had not yet answered the Complaint, and the initial case management conference had not yet been scheduled.

Second, the defendants argued that the reexamination would likely result in cancellation or substantial amendment to all claims asserted against them.  Although the request for reexamination had not yet been granted at the time the Motion to Stay was filed, the defendants noted that four of the five prior art references cited in the request had not been considered during original prosecution of the ‘405 patent.  The defendants also detailed why the prior art references disclose the limitations of the claims of the ‘405 patent.

Finally, the defendants noted that Gibson had waited more than two years after the release of the first Guitar Hero® video game to file suit.  The defendants argued that this delay demonstrated that Gibson would not be unduly prejudiced by an additional delay during reexamination proceedings.

In an unusual turn, Gibson agreed that at least a partial stay of the case was warranted, requesting only that the parties should be allowed to proceed with limited document discovery focused on prior art.  Gibson was concerned that the defendants would withhold prior art from Gibson until after the reexamination had concluded, and that as a result the Patent Office might not have the opportunity to review all the prior art Gibson would introduce at trial.  Judge Thomas A. Wiseman granted the stay on August 8, 2008 , noting that Gibson conceded that a stay was appropriate and that a stay would preserve judicial resources and avoid duplication of effort.  The Court refused to allow partial discovery, finding it not only unwarranted, but also unsupported by the law.

Just less than twenty months after the reexamination request, on October 16, 2009, the defendants filed a Motion to Lift Stay based on the Patent Office’s Notice of Intent to Issue Ex Parte Reexamination Certificate.  Noting their intent to file a motion for summary judgment of non-infringement, the defendants point out that the independent claims of the ‘405 patent were each amended during reexamination to recite “a musical instrument adapted for (a) making musical sounds and (b) generating/producing an instrument audio signal representative of the musical sounds.”  The defendants argue that the Guitar Hero® and Rock Band™ games do not feature a “musical instrument” with such features.  In support of this claim, the defendants point to a previous case between Activision Publishing, Inc. (”Activision”) and Gibson, in which a district court granted Activision’s motion for summary judgment based on the fact that the Guitar Hero® game does not make use of an actual musical instrument.  The defendants therefore anticipate that their motion for summary judgment of non-infringement will dispose of the case in its entirety.