DECISION & ORDER
PRELIMINARY STATEMENT
Spread Spectrum Screening LLC (“S3”) commenced this action on February 18, 2010, alleging that Eastman Kodak Company (“Kodak”) infringed its patent for a digital half-toning screen, United States Patent No. 5,689,623 (“the '623 patent”), by making, using and selling Kodak “Staccato” software products. (Docket ## 1, 181-11 at 2). Cur
For the reasons discussed below, Kodak’s motion for a stay is granted, except that S3 shall be permitted to apply for the issuance of letters rogatory authorizing depositions of two witnesses who are Canadian citizens, Daniel Blondal and Lawrence Croft.
BACKGROUND
On February 18, 2010, S3 filed suit in the Northern District of Illinois against Kodak and four of Kodak’s customers that are licensed users of the Staccato software. (Docket # 173-11 at 3). After being granted an extension of time to answer the complaint (Docket ## 25, 44), Kodak moved for a severance from the other defendants and to transfer the ease to this district (Docket # 82). Kodak’s motion was granted on September 1, 2010. (Docket # 167).
The district judge to whom the case was assigned in the Northern District of Illinois declined to stay discovery while Kodak’s transfer motion was pending, and the parties thus began exchanging initial disclosures under the supervision of a magistrate judge pursuant to that court’s local rules. (Docket # 108). On June 10, 2010, Kodak disclosed prior art to S3. (Docket # 186 at 11 n. 12). On June 29, S3 served Kodak with document requests. (Id. at 6). On July 19, Kodak moved for an extension of time to respond to S3’s interrogatories and requests for production (Docket # 154), and was granted extensions until August 18 to respond to S3’s interrogatories and September 1 to respond to the requests for production (Docket # 159). Kodak did not produce the requested discovery by those deadlines. (Docket # 173). On September 1, 2010, the transfer motion was granted. (Docket # 160).
Kodak did not respond to S3’s discovery requests even after the case was transferred to the Western District of New York, maintaining that the “prior orders of the Northern District of Illinois have no force before [the Western District of New York].” (Docket # 173-9). On December 6, 2010, S3 moved to compel Kodak’s responses. (Docket # 173).
Ten days later, Kodak filed a petition for an ex parte reexamination with the United States Patent and Trademark Office (“PTO”). (Docket # 181-11 at 4). Shortly thereafter, on January 10, 2011, Kodak filed the instant motion to stay the lawsuit pending the PTO’s determination of Kodak’s petition for reexamination. (Docket # 181). The PTO granted Kodak’s petition for reexamination on February 1, 2011, and thereafter preliminarily rejected all claims of the patent-in-suit. (Docket ## 188, Ex. J; 206; 207).
S3 opposes the requested stay in part, agreeing that the “claim scope-dependent aspects of the case”
On February 9, 2011, this Court held argument on S3’s motion to compel and Kodak’s motion to stay. (Docket # 196). This Court granted S3’s motion to compel and reserved on Kodak’s motion for a stay. (Docket # 194).
S3 opposes a complete stay and requests permission to take three depositions during the pendency of the PTO’s reexamination “in order to preserve critical evidence.” (Docket # 197 at 1). Specifically, S3 seeks to conduct a limited Rule 30(b)(6) deposition of Kodak and to depose two individuals, Daniel Blondal and Lawrence Croft, who, according to S3, “worked closely with [the '623 patent inventor] during Kodak’s efforts to research and develop” the Staccato software ten years ago. (Id. at 3). Because the two named witnesses are Canadian citizens, S3 must apply for the issuance of letters rogatory in order to secure their testimony.
DISCUSSION
A. Applicable Legal Principles
The procedure for patent reexamination is established by statute in Title 35 of the United States Code. In pertinent part, the statute provides:
Any person at any time may file a request for reexamination by the [PTO] of any claim of a patent on the basis of any prior art cited under the provisions of section 301 of this title----The request must set forth the pertinency and manner of applying cited prior art to every claim for which reexamination is requested.
35 U.S.C. § 302, et seq. “One purpose of the reexamination procedure is to eliminate trial of the issue of patent claim validity (when the claim is cancelled by the [PTO]), or to facilitate trial of that issue by providing the district court with the expert view of the PTO (when a claim survives the reexamination proceeding).” Snyder Seed Corp. v. Scryp-ton Sys., Inc.,
Although the commencement of reexamination proceedings does not operate as an automatic stay of federal court litigation involving identical claims, a district court retains the authority, pursuant to its inherent power to control and manage its docket, to stay an action pending the outcome of reexamination proceedings before the PTO. Ethicon, Inc. v. Quigg,
Courts “routinely” issue stays pending the outcome of reexamination proceedings, particularly in cases where the litigants have not made substantial progress towards trial. See, e.g., Softview Computer Prods. Corp. v. Haworth, Inc.,
Deferring determinations of patent validity to the PTO offers many advantages, including the following:
1. All prior art presented to the Court will have been first considered by the PTO, with its particular expertise.
2. Many discovery problems relating to prior art can be alleviated by the PTO examination.
3. In those eases resulting in effective invalidity of the patent, the suit will likely be dismissed.
4. The outcome of the reexamination may encourage a settlement without further use of the Court.
*88 5. The record of the reexamination would likely be entered at trial, thereby reducing the complexity and length of the litigation.
6. Issues, defenses, and evidence will be more easily limited in pre-trial conferences after a reexamination.
7. The cost will likely be reduced for the parties and the Court.
Snyder Seed Corp.,
Three factors generally deserve consideration in determining whether to stay a litigation pending reexamination by the PTO: (1) whether a stay would unduly prejudice or present a clear tactical disadvantage to the non-moving party; (2) whether a stay will simplify the issues in question and trial of the ease; and (3) whether discovery is complete and whether a trial date has been set. Softview Computer Prods. Corp.,
B. Analysis
Turning to the first factor, S3 claims that the witnesses’ memories may fade further if fact discovery is stayed. (Docket # 186 at 6). Specifically, S3 argues that the two individual witnesses possess “critical evidence” that will be lost if their depositions are delayed. (Docket # 197 at 3). In addition, S3 contends that a complete stay will reward Kodak’s dilatory conduct. (Docket # 186 at 12). Finally, S3 also argues that the length of time that the letters rogatory process takes to complete, which “may take a year or more,” also weighs against the requested stay. (Docket # 197 at 4-6).
Of course, some prejudice to S3 is inherent in any delay, but delay alone is insufficient to prevent a stay. See Bausch & Lomb Inc. v. Alcon Labs., Inc.,
Nor has S3 demonstrated that Blondal and Croft’s memories are more likely to fade over the course of the next year than has already occurred over the last decade. See Alltech, Inc. v. Agra-Partners, Ltd.,
In addition, S3 has failed to demonstrate that it will be prejudiced if it is not permitted to conduct a 30(b)(6) deposition of Kodak. At oral argument, S3 contended that it sought corporate testimony on only three topics of the dozens of topics originally no
Finally, I do not find that granting a stay will unfairly reward Kodak for dilatory conduct in this case. Although this Court concluded that Kodak was not justified in withholding discovery ordered by the district court in the Northern District of Illinois, that issue was addressed and remedied through an earlier motion to compel. Taking the record as a whole, I find no basis to conclude that Kodak filed its petition for reexamination in order to gain a tactical advantage in this litigation.
In sum, I find that the advantages resulting from the PTO’s reexamination outweigh the disadvantages that result from the invariable delay occasioned by the requested stay. See Snyder Seed Corp.,
The second factor — whether a stay will simplify the issues in question and trial of the case — -also weighs in favor of the requested stay. Should the PTO determine that all or some of the patent claims at issue are invalid, that determination will conserve the resources of this Court and the litigants and simplify the issues before the Court. Conversely, should the PTO reaffirm the patent claims, the Court will benefit from its expert analysis of those claims and the prior art. See Bausch & Lomb Inc. v. Rexall Sundown, Inc.,
The third factor — whether discovery is complete and whether a trial date has been set — plainly weighs in favor of the issuance of a stay. While document discovery has been undertaken, no other fact discovery has occurred. No Markman hearing has been scheduled, let alone conducted, and, of course, no trial date has been set. The early posture of this litigation thus supports the requested stay. See, e.g., Bausch & Lomb Inc. v. Rexall Sundown, Inc.,
On this record, I find that a stay is warranted in this case pending the PTO’s reexamination proceedings. The Court will, however, permit S3 to apply for letters rogatory to secure the depositions of Blondal and Croft, although it may not conduct any authorized depositions absent further order of the Court.
CONCLUSION
For the reasons stated above, Kodak’s motion for a stay (Docket # 181) is GRANTED
Counsel for the parties are directed to contact this Court in writing within seven (7) days of a decision by the PTO on the pending reexamination proceeding to request a status conference.
IT IS SO ORDERED.
Notes
. Kodak uses the term "claim scope-dependent aspects of the case” to refer to claim construction, expert discovery, summary judgment and trial. (Docket # 186 at 1).
. The parties agree that S3 must utilize a letters
. The record reveals that the original notice identified at least thirty-three topics. (See Docket # 197 at 7).
. 35 U.S.C. § 315(c) provides:
A third-party requester whose request for an inter partes reexamination results in an order under section 313 is estopped from asserting at a later time, in any civil action arising in whole or in part under section 1338 of title 28, the invalidity of any claim finally determined to be valid and patentable on any ground which the third-party requester raised or could have raised during the inter partes reexamination proceedings.