District of Massachusetts IP Blog

Motion for Stay Pending Inter-Partes Reexam Denied

ADA Solutions, Inc. sued a number of defendants for infringement of Patent No. 7,779,581.  One of the defendants moved for ex parte re-examination of the patent.  Another moved for inter partes reexam.  The inter partes request was granted.  Three days after that request was granted, the defendants moved to stay.  At that point, the case was seven months old. 

Despite the early nature of the case, Judge Gorton denied the stay request due to the prejudice to the plaintiff and the existence of issues in the court case the PTO would be unable to resolve.  D. Mass. courts typically do not grant these stay requests, though it does sometimes happen.  The order comes three days after the plaintiff sued many of the same defendants for infringement of a different patent. 

ADA Solutions, Inc. v. Engineered Plastics, Inc., 10-11512-NMG (D. Mass. Oct. 7, 2011)

Stipulated Injunction Mitigates Prejudice From Stay

Gryphon Networks had sued a former employee and his new employer for patent infringement, trade secret misappropriation, breach of contract, unfair competition, etc.  The case was stayed by Magistrate Bowler pending the reexamination of the patent-in-suit.  Following that order the parties stipulated to a preliminary injunction prohibiting the defendant from selling the accused product.  I wonder what transpired to get the defendant to agree to the injunction. 

Gryphon Networks Corp. v. Contact Center Compliance Corp., 10-10258-MBB (D. Mass. Sep. 30, 2011)

Patent Claims Severed And Stayed Pending Reexam

Gryphon Networks had sued a former employee and his new employer for patent infringement, trade secret misappropriation, breach of contract, unfair competition, etc.  Gryphon alleges that the employee departed with a customer list that he promptly shared with his new employer.  The defendant moved to sever the patent claims and for a stay pending reexamination of the patent, a reexamination instituted by the defendant shortly after the suit was filed. 

Magistrate Judge Bowler balanced the requisite factors and granted the motion and stayed the patent claims pending resolution of the reexam.  At the time of the decision fact discovery was underway, though depositions were just beginning and claim construction had been briefed, but not decided. 

Gryphon Networks Corp. v. Contact Center Compliance Corp., 10-10258-MBB (D. Mass. June 13, 2011)

Zobel Performs Triage With Bickering Parties

Judge Zobel quickly worked her way through a number of pending motions in a patent case she has previously characterized as “all-out war.”  In two pages she set a trial date, ordered both CEOs to sit for depositions, denied a request to stay pending re-exam (an earlier request to stay was also denied), and denied a request to release protected information that would just lead to “yet another lawsuit.”  (That last request was denied without prejudice pending the outcome of the present case.) 

In a final bit of exasperation, Judge Zobel noted: 

 

No Stay Pending Reexamination in Nuance v. Vlingo

Judge Zobel has weeded through several cross motions in an ongoing, and apparently increasingly nasty, dispute over speech-recognition software.  Other posts regarding this case can be found here and here.  From Judge Zobel’s characteristically short order: 

“Although styled a patent infringement action, this case has blossomed into all-out war being waged in courts in the United States and in England, and in the Patent Office.”

In the order Judge Zobel denied Vlingo’s motion to stay the case pending reexamination, reaffirmed a May 2011 trial date and resolved cross motions on discovery disputes.

Nuance Communications, Inc. v. Vlingo, Corp., 09-11414-RWZ (D. Mass. Dec. 15, 2010)