Declaratory judgment actions, covenants not to sue, and bad patents: a call to allow the judiciary to weed out bad patents while adhering to the "case or controversy" requirement.

• Jurisdiction: United States
• Date: 01 January 2013
• Author: Tiedeman, Jason Scott

3. Staying Litigation

   Another issue surrounding ex parte reexamination, post-grant review, and inter partes review is whether litigation is currently occurring or may begin while the reexamination or review is instigated. In an ex parte reexamination, the patentee is under a duty to disclose any co-pending proceedings to the Director, including litigation. (223) Additionally, the examiner is required to perform a litigation check to ensure that the USPTO is aware of any co-pending litigation. (224) When litigation is instituted after the commencement of an ex parte reexamination, the Director may suspend the reexamination. (225) The Director will generally not stay reexamination and the ex parte reexamination will continue unless the court finds a claim or claims invalid or unenforceable. (226) If this occurs, the ex parte reexamination with respect to these claims is suspended. (227) However, if a claim is found to be valid, this has no bearing on the ex parte reexamination and the reexamination will continue. (228)

   On the opposite side, if an ex parte reexamination is requested after litigation has begun, the Director will not approve the petition until a stay is issued. (229) Courts will generally stay litigation until the Director has accepted or denied the petition. (230) However, "[t]he court is not required to stay judicial resolution in view of the reexaminations." (231)

   Courts generally weigh three factors when deciding whether to grant a stay pending ex parte reexamination of the patent at issue: "(1) whether a stay would unduly prejudice or present a clear tactical disadvantage to the...