A blog about patent, copyright and trademark law in the U.S. District Court
for the Southern District of New York

Court Declines to Stay Enforcement of Patent Infringement Judgment Pending Patent Office Reexamination

In an April 11, 2014 ruling, Judge Samuel Conti denied the defendants' motion to stay execution of damages pending reexamination in the Patent Office of the patent-in-suit in this infringement action. Following a jury verdict, including for willful infringement, the Court entered judgment against the defendants for $953,424.66. Shortly before the trial, the defendants filed an request for reexamination, and after the trial and the jury’s verdict, the Patent Examiner issued a non-final office action invalidating the single claim at issue. The defendants then moved for the stay.

Noting that courts have discretion stay proceedings during Patent Office proceedings, Judge Conti found that all three factors that usually inform the stay decision weigh in favor of denying the stay, particularly given the lateness of the request and the advanced state of the lawsuit. Although Judge Conti recognized that there is some risk the judgment could become final and the patent-in-suit would later be invalidated (which does not permit reopening the judgment), he found the concerns premature, and wrote that “the Court would be willing to reconsider its decision to stay” if the Patent Office renders a final decision on validity while the appeal is still pending.

The Court also treated the defendants’ motion in the alternative as a request for a stay pending appeal without the posting of a supersedeas bond. Judge Conti again ruled that the pertinent factors weigh against entry of such a stay, and denied the motion.
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