A stay pending inter partes reexamination is appropriate even where the proponent is not a party to the reexamination. The District of New Jersey granted defendants' motions to stay pending inter partes reexamination of the patents-in-suit, agreeing with defendants that "stays pending reexamination are freely given in this District, as almost every reported New Jersey District Court opinion that has considered the issue has granted a stay where a reexamination request was pending." Synchronoss Techs., Inc. v. Asurion Mobile Applications, Inc., No. 11-cv-5811, slip op. (D.N.J. Mar. 22, 2013) (Bongiovanni, M.J.).
Synchronoss had filed three patent infringement actions in the District of New Jersey, one of which was against NewBay Software Ltd., which filed the requests with the USPTO leading to the inter partes reexaminations at issue in these motions. After the USPTO granted the requests and issued Office actions rejecting all of the subject claims, Synchronoss dismissed the action against NewBay after Syncrhonoss reached an agreement to acquire NewBay. Asurion's and Onmobile's motions were based on the NewBay reexamination.
The Court applies a three-part test in determining whether to stay a matter pending reexamination:
- whether a stay would unduly prejudice or present a clear tactical disadvantage to the non-moving party;
- whether a stay will simplify the issues in question and trial of the case; and
- whether discovery is complete and whether a trial date has been set.
As to the first factor, the delay inherent in the reexamination process is itself insufficient to establish undue prejudice. Even if the parties are direct competitors, this does not necessarily translate to undue prejudice for the opponent.
As to the second factor, there is no requirement that a reexamination resolve all issues or even most of the issues in the case. Any analysis by the USPTO that could provide valuable guidance to the Court in resolving the remaining issues could support granting a stay. Furthermore, it is not inappropriate to grant a stay even where the movant is not a party to the reexamination proceeding.
The third factor takes into account only that which has been done in litigation and does not consider any pre-litigation efforts of the patentee. Where the case is still relatively early in discovery, this factor will favor a stay.
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