826 F. Supp. 2d 348
D. Mass.2011Background
- ADA Solutions owns the '581 patent issued Aug 24, 2010 and sues for infringement over replaceable cast-in-place tactile warning systems.
- Defendants include White Cap Construction Supply, HD Supply Construction Supply, Engineered Plastics, Inc., and Access Products, Inc.
- PTO issued the '581 patent to ADA and ADA filed the initial complaint in Aug 2010; White Cap joined in Feb 2011.
- During discovery, ADA learned of Tranfixigns patent potentially invalidating the '581 patent.
- ADA requested ex parte reexamination of the '581 patent on May 4, 2011; EPI requested inter partes re-examination on May 26, 2011; PTO granted on Jun 24, 2011.
- Defendants moved to stay the litigation pending inter partes re-examination.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Prejudice to non-movant from a stay | ADA Solutions would face undue prejudice and market-share loss against direct competitors. | A stay would allow PTO validity findings to resolve issues efficiently. | Stay denied due to prejudice to ADA Solutions. |
| Issue simplification from stay | Not required; re-examination could still simplify some issues. | Re-exam could simplify by resolving validity and prior-art questions. | Stay not warranted; not significantly simplifying all issues. |
| Timing/stage of litigation | Case is beyond infancy with substantial discovery completed. | Case is in early stage; discovery not complete and trial not scheduled. | Stay denied; litigation stage favors proceeding. |
Key Cases Cited
- Gould v. Control Laser Corp., 705 F.2d 1340 (Fed.Cir.1983) (examination may simplify issues and aid trial)
- Gryphon Networks Corp. v. Contact Center Compliance Corp., 792 F.Supp.2d 87 (D.Mass.2011) (three-factor test for stay pending re-exam)
- Tesco Corp. v. Weatherford Int'l, Inc., 599 F.Supp.2d 848 (S.D.Tex.2009) (prejudice to non-movant when parties are direct competitors)
- Boston Scientific Corp. v. Cordis Corp., 777 F.Supp.2d 783 (D.Del.2011) (timing factors influence stay prudence)
- IMAX Corp. v. In-Three, Inc., 385 F.Supp.2d 1030 (C.D.Cal.2005) (re-examination may or may not simplify depending on issues)