October 31, 2013 Articles

Filing a Renewed Motion to Stay Litigation

Issues and strategies to keep in mind when requesting a patent reexamination.

By Erwin Cena

It is not uncommon during patent litigation for a party to request inter partes reexamination of one or more of the patents at issue. The most recent statistics from the U.S. Patent and Trademark Office (USPTO) indicate that 66 percent of inter partes reexamination requests are tied to litigation. After petitioning for reexamination, a party may move to stay litigation pending the outcome of the reexamination. If the court denies the motion or grants a stay only to lift it at a later date, the party challenging the patent's validity can file a renewed motion to stay litigation.

A renewed motion relies on the same legal factors as the original motion. Therefore, the motion's success is often entirely contingent on persuading the court that new developments in the reexamination proceedings warrant a stay. At the same time, because the timing of a renewed motion to stay is likely to occur when discovery is at a more advanced stage or even completed, the moving party will need to explain why the advanced stage of the case does not weigh against a stay. This article discusses the considerations in filing a renewed motion to stay and identifies some of the pertinent case law and arguments helpful to parties seeking a stay.

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