Chief Judge Sleet Grants Motion to Stay Pending Inter Partes Reexamination

Chief Judge Sleet has granted a patent infringement defendant’s motion for a stay pending completion of inter partes reexamination of several patents-in-suit. See BodyMedia, Inc. v. Basis Science, Inc., C.A. No. 12-133-GMS, Order at 1-3 (D. Del. June 6, 2013). Judge Sleet first found that a stay would not result in undue prejudice to the plaintiff. The PTO had granted six of the defendant’s seven reexamination requests, thus mooting the plaintiff’s objection that the PTO had not yet acted on the requests. Furthermore, the parties’ competitive relationship did not weigh against granting a stay in light of the fact that the defendant had not yet sold its product and the plaintiff had not sought a preliminary injunction. Finally, Judge Sleet rejected the plaintiff’s allegations of potential prejudice, given that “the potential for litigation delay, by itself, is insufficient to demonstrate that [the plaintiff] will be unacceptably prejudiced” and “the timing of the reexamination and stay requests do not evidence any dilatory motive.” Id. at 3. Judge Sleet also found that the simplification-of-issues-in-question factor favored granting a stay: “[I]f the court were to deny [the defendant’s] request for a stay, it would be adjudicating less than ten percent of [the plaintiff’s] 243 asserted claims. Further, 15 of the 22 claims not covered by the pending reexaminations depend on claims that have been rejected. Thus, while [the plaintiff] is correct that there will be issues for judicial resolution not involved in the inter partes reexamination, the court is convinced that, in view of the foregoing, the reexamination proceedings will simplify the overlapping issues present in the reexamination and that will ultimately be before the court.” Id. Thus, Judge Sleet concluded, “a stay of this action will promote judicial economy and avoiding wasting the parties’ efforts and expense in parallel proceedings.” Id.

BodyMedia, Inc. v. Basis Science, Inc., C.A. No. 12-133-GMS, Order (D. Del. June 6, 2013).

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