277 F.R.D. 84
W.D.N.Y.2011Background
- S3 sued Kodak for infringement of United States Patent No. 5,689,623 on Kodak’s Staccato software (Feb 18, 2010).
- The case was originally filed in the Northern District of Illinois against Kodak and four licensed users; Kodak moved to sever and transfer, which occurred on Sept 1, 2010.
- After transfer to the Western District of New York, Kodak resisted Northern District discovery orders; S3 moved to compel in Dec 2010.
- Kodak filed a petition for ex parte reexamination with the USPTO; the PTO granted reexamination on Feb 1, 2011 and preliminarily rejected all claims.
- S3 sought a stay with limited discovery, arguing to preserve evidence through depositions; Kodak opposed a full stay but did not oppose letters rogatory for Canadian witnesses Blondal and Croft.
- The court granted a stay pending PTO reexamination, except that S3 may pursue letters rogatory to secure Blondal and Croft’s testimony if authorized depositions require further court order.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether to stay litigation pending PTO reexamination | S3 argues limited stay of claim-scope issues is appropriate; seeks to preserve evidence via depositions. | Kodak contends a stay is warranted to streamline issues and avoid costly discovery. | Stay granted pending PTO reexamination, with letters rogatory allowed for Blondal and Croft. |
| Impact of stay on fact discovery | S3 asserts memory might fade; wants to preserve evidence via depositions. | Kodak argues no automatic right to broad fact discovery during stay. | Depositions not allowed during stay unless further Court order; 30(b)(6) deposition is not permitted now. |
| Permissibility of letters rogatory for Canadian witnesses | S3 must use letters rogatory to obtain Blondal and Croft testimony. | Kodak does not oppose letters rogatory, only depositions during stay. | Letters rogatory may be pursued during stay; depositions require further order. |
| Effect on Markman and trial readiness | Not necessary to proceed with Markman during stay; discovery limited. | Staying pending reexamination will streamline issues if claims survive or be invalidated. | Stay deemed to potentially simplify issues and trial posture if PTO outcome supports it. |
| Timeliness of stay given absence of complete discovery | Some discovery completed; argues delay is justified by reexamination. | Diligence of PTO proceeding supports stay to avoid duplicative effort. | Third-factor considerations favor stay; discovery is ongoing but not extensive. |
Key Cases Cited
- Xerox Corp. v. 3Com Corp., 69 F. Supp. 2d 404 (W.D.N.Y. 1999) (court stayed to await PTO reexamination; efficiency and expertise of PTO highlighted)
- Ethicon, Inc. v. Quigg, 849 F.2d 1422 (Fed. Cir. 1988) (district court may stay pending reexamination under inherent supervisory power)
- Bausch & Lomb Inc. v. Rexall Sundown, Inc., 554 F. Supp. 2d 386 (W.D.N.Y. 2008) (stay appropriate where reexamination would simplify issues and trial)