Memorandum Order
Memorandum Order
MEMORANDUM ORDER
At Wilmington this 2nd day of September 2010, having considered the letters
(D.I. 222; D.1. 223) submitted in connection with Superior Essex's oral motion to stay
litigation with respect to U.S. Patent Nos. 5,424,491 ("the '491 paten!"), 7,135,641 ("the
'641 patent"), 6,570,095 ("the '095 patent"), 6,998,537 ("the '537 patent") and 7,179,999
Patent Nos. 6,074,503 (Uthe '503 patent") and 7,339,116 ("the '116 patent") (collectively,
along with the patents at issue, "the Belden patents"), which are generally directed to
Belden commenced this patent infringement action against Superior Essex. In addition
emerging trend in patent litigation, Superior Essex subsequently filed a request with the
United States Patent and Trademark Office ("PTa") for inter partes reexamination of
the '095, '537, '999, and '641 patents, and ex parte reexamination of the '491 and '503
patents. The PTa, determining that a substantial new question of patentability existed
for each of the Belden patents, granted the requests and initiated reexamination
proceedings.
a. By status report filed on June 24, 2010, Superior Essex advised the
court that the Central Reexamination Unit ("CRU") of the PTa had rejected all of the
claims of the patents at issue. Specifically, the CRU has issued an Action Closing
rejecting all of the asserted claims. (0.1. 202, ex. A) The claims of the '491 patent also
stand rejected, but the CRU has not yet issued an ACP in this patent. (Id.) On July 19,
2010, the CRU noticed its intent to issue a reexamination certification confirming the
patentability of the claims of the '503 patent. (0.1. 204, ex. A) Belden has not yet
memorandum opinion"), the court ruled upon the parties' cross motions for summary
judgment of, inter alia, infringement and invalidity. (See 0.1. 216) The court determined
that, as a matter of law: 1) certain accused products infringe the Belden patents; 2)
certain accused products do not infringe the Belden patents; and 3) the '116 patent is
invalid for anticipation. (See 0.1. 217) The parties have confirmed that the
memorandum opinion resolved the issue of infringement, and that only validity remains
2
August 25, 2010 pretrial conference, Superior Essex moved that this court stay litigation
with respect to the patents at issue and proceed to trial only with respect to the validity
discretionary powers of the court. Dentsply Int'l, Inc. v. Kerr Mfg. Co., 734 F. Supp.
656,658 (D.DeI.1990) (citing Bechtel Corp. v. Laborers'lnt'l Union, 544 F.2d 1207,
1215 (3d Cir.1976)). Three general factors inform the court in this regard:
1) whether the granting of a stay would cause the non-moving party to suffer
undue prejudice from any delay or allow the moving party to gain a clear tactical
advantage over the non-moving party; 2) whether a stay will simplify the issues
for trial; and 3) whether discovery is complete and a trial date set.
Enhanced Security Research, LLC v. Cisco Sys., Inc., 2010 WL 2573925, at *3 (D. Del.
June 25,2010) (citing St. Clair Intellectual Prop. Consultants v. Sony Corp., 2003 WL
novel issues to the timely and efficient disposition of patent infringement disputes. 1
potentially obviate a multi-issue patent litigation and conserve finite judicial resources,
this district carefully considers whether "there is 'even a fair possibility' that the stay
would work damage on another party." Dentsply Int'l, 734 F. Supp. at 658 (internal
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citations omitted). Upon balance of the aforementioned factors, as explained infra, the
court concludes that Superior Essex's motion does not warrant the grant of a stay.
or eliminate multiple validity issues. Accordingly, a stay is more appropriate when the
only issues left for trial completely overlap with those typically resolved upon
U.S.C. § 112, or other issues outside the purview of reexamination remain to be tried.
Here, the parties concede that only Superior Essex's allegations of obviousness and
anticipation remain at issue, both of which are proper candidates for a reexamination
inquiry.
reexamination made well after the onset of litigation followed by a subsequent request
to stay may lead to an inference that the moving party is seeking an inappropriate
tactical advantage. Belden instituted this action in January 2008 and the various
reexaminations were requested approximately 17-20 months later in mid to late 2009.
(2) Timing of the request for stay. Superior Essex has known
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about the ACPs in the inter partes reexaminations and the rejection in the ex parte
examination of the '491 patent for several months. Yet it has chosen to reveal its desire
to stay litigation only after the issuance of the memorandum opinion, a mere eleven
days before trial. A request at this late stage is prejudicial to Belden's investment in trial
preparation and does not comport with the notion of judicial efficiency. See Remington
Arms Co. v. Modem Muzzleloading, Inc., 1998 WL 1037920, at *1 (M.D. N.C. 1998)
(denying stay because "[w]hile this court is cognizant of the advantages of granting the
stay, this court finds that the many burdens associated with a stay outweigh the
benefits," such burdens including the "considerable monies" already expended, and the
"waste of time and judicial resources" that would result from staying the proceedings
"especially at this late stage of the litigation .... "). The court finds a similar inference
of prejudice in the delay between the PTO's notification of the ACPs and Superior
reexamination is an arduous process fraught with the potential for multiple appeals.
by the CRU has a historical average pendency of 31.4 months. (0.1.223, ex. B)
consideration of the process after the CRU issues a RAN, to wit, the subsequent appeal
2Because both Belden and Superior Essex are parties to the inter partes
reexaminations, each may appeal a patentability decision adverse to that party's
interests. See MPEP § 2673.02.
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("BPAI"). The significant span of time between these two events is confirmed by
Superior Essex's own evidence, presented in a statistical analysis, which concludes that
the current average pendency between receiving a RAN and, subsequently, a decision
from the BPAI was roughly equivalent to that of the underlying reexamination by the
CRU. 3 (D.I. 223, ex. D at 6) While the possibility of a subsequent appeal to the Federal
Circuit extends the time line of this process, only one inter partes reexamination has
reached this stage, and the parties voluntarily dismissed the case prior to briefing. See
Cooper Cameron Corp. v. Safoco, Inc., 368 Fed. Appx. 108 (Fed. Cir. 2009). In short,
the reexamination of the patents at issue, having yet to produce a single RAN, may
substantially outlast the jury verdict (which will be rendered in approximately 2 weeks),
post trial briefing and subsequent Federal Circuit review associated with this litigation.
2977552 (D. Del. July 26,2010) ("SSBG"), where the BPAI had received each parties'
appeal briefs and had conducted oral argument in one of the two reexaminations. All
that remains in the SSBG reexamination (excluding a potential appeal to the Federal
Circuit) is for the BPAI to render its decision. The court concludes that the docketing of
the reexamination appeal serves as a minimal benchmark that would weigh in favor of a
31n 2009, the PTa averaged 840 days between the filing of a request for
reexamination and the issuance of a RAN, 649 days between the issuance of a RAN
and the subsequent docketing of the appeal, and an additional 234 days between the
docketing and rendering of a BPAI decision. (D.1. 223, ex. D at 6)
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stay. In the case at bar, Belden may statistically wait as long as three years after
receiving its RANs; this factor cuts against the grant of a stay.
stay proceedings where the parties are direct competitors. See Nidec Corp. v. LG
Innotek, Co., 2009 WL 3673433, at * 4 (E.D. Tex. Apr. 3, 2009); and 02 Micro Int'! Ltd.
v. Beyond Innovation, 2008 WL 4809093, at *2 (E.D. Tex. Oct. 29, 2008). The request
for a preliminary injunction may indicate the presence of this type of prejudice. See
Nat'! Oi/well Varco, L.P. v. Auto-Oril, Inc., Civ. No. 5-09-cv-00085 (E.D. Tex. January 5,
2010) ("Plaintiff contends that a stay would delay the possibility of [it] obtaining an
injunction to prevent ongoing infringement by the defendant and that the defendant is a
thinly capitalized company without great resources. The parties are direct competitors
and a denial of timely enforcement of either party's patent rights would indeed unduly
prejudice that party."). The record does not demonstrate that these parties are direct
competitors. And, as Superior Essex correctly notes, Belden has not sought a
preliminary injunction. 4 This factor, then, favors Superior Essex's motion to stay.
4. Conclusion. Upon balance, the factors mentioned supra do not favor either
party. In such a case, the court is not inclined to grant a stay. For the foregoing