More On

IP: Coase’s Theorem and stays pending re-examination

What to do when the judge says no.

It’s a common problem in patent litigation, at least for a defendant. Your company is sued on a patent that your lawyers say is invalid, and they have the prior art to prove it. But summary judgment has become an anachronism, at least with your judge, and you don’t want to pay millions just to get to a jury.

Under the circumstances, a re-examination proceeding—in which the Patent Office re-opens the examination of an issued patent based on certain categories of prior art—is starting to look like an attractive alternative. The costs are de minimis compared even to a couple months of federal litigation. And the Patent Office grants these petitions more than 90 percent of the time, with the vast majority of patent claims either cancelled or changed, either ending litigation or at least creating obstacles to the plaintiff’s chances of recovery. Of course, re-examination can take three years, and by that time you’d be as many millions into your federal litigation, perhaps even done with it. So, naturally, you plan on asking the court to stay your litigation pending the outcome of Patent Office proceedings.


author image

Jeffrey Dean

Jeffrey Dean is a partner of Marshall, Gerstein & Borun LLP, and concentrates on the defense of patent infringement claims on behalf of corporations....

Bio and more articles

Join the Conversation

Advertisement. Closing in 15 seconds.