Defendants in patent infringement actions often seek re-examination of the patent(s)-in-suit in the United States Patent and Trademark Office to halt the progress of the case in federal court. A defendant then typically files a motion to stay the infringement action pending the PTO’s re-examination, on the grounds that the operative patent claims may be canceled or amended by the PTO and it would be inefficient for litigation to proceed until the re-examination process is complete.
The Northern District of California has developed its own three-factor balancing test for determining whether to stay an action pending re-examination, considering: 1) the stage of the litigation, including whether discovery is or will soon be completed and whether the matter has been set for trial; 2) whether a stay will unduly prejudice or tactically disadvantage the nonmoving party; and 3) whether a stay will simplify the issues in question and streamline the trial, thereby reducing the burden of litigation on the parties and the court. And as a trend-setting patent litigation district, the Northern District’s approach is instructive for wider-ranging patent litigation actions.
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