Richards Layton & Finger

Judge Andrews Stays Case Pending ex Parte Re-Examination

December 19, 2017

In Waters Technologies Corp. v. Aurora SFC Systems, Inc., No. 11-708-RGA (D. Del. Nov. 13, 2017), Judge Andrews granted the defendant’s motion to stay pending ex parte re-examination. A scheduling conference had taken place a week before this decision, the motion was filed before the trial date was put in place, and the examiner’s finding that all asserted claims of one asserted patent were unpatentable was on appeal to the PTAB. The Court invited the plaintiff to move to lift the stay should the PTAB rule in its favor.

Key Point: In staying a case pending since 2011 with a complex procedural history, Judge Andrews noted that “Plaintiff can hardly complain (though it does) that merits litigation has been postponed for years, when the passage of those years has resulted in avoiding litigation over patents whose claims have been 100% invalidated or withdrawn.”