One strategy frequently considered by a defendant in a patent litigation lawsuit is to file a patent reexamination before the U.S. Patent and Trademark Office (PTO) and request that the district court litigation be stayed pending the reexamination outcome. A recent decision from one Court expands the scope of when a reexamination may stay litigation. In PPS Data, LLC. v. Allscripts Healthcare Solutions, Civil Action No. 12-83, Order (M.D. Fla. Mar. 1, 2012), the District Judge stayed an infringement case pending because a related patent was the subject of an ongoing reexamination.

Invalidating a patent is an uphill battle as patents are presumed valid. An alleged patent infringer can rebut validity of another’s patent by either invalidating the claims before a federal district court or before the PTO in a process called reexamination, which is much less expensive than a litigation. The outcome of the reexamination can be cancellation of patent claims, amending claims or confirming patentability of the claim. While courts are not obligated to stay a litigation proceeding if the patent-in-suit is being reexamined, it is not uncommon for the court to halt the case pending the outcome of the PTO decision.

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