District Court Stays Patent Infringement Suit Pending Outcome Of Reexamination Proceeding On Related Patent Not At Issue In Case

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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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Published In: Administrative Agency Updates, Civil Procedure Updates, Intellectual Property Updates

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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