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Judge Stark: Patentees should expect that stipulating to stay one action pending reexamination will be an important factor in the Court’s decision whether to grant a stay in a related action

In a recent memorandum order, Judge Stark granted a defendant’s motion to stay pending reexamination, finding that each relevant factor favored a stay. Smarter Agent, LLC v. MobileRealtyApps.com, LLC, C.A. No. 11-915-LPS (D. Del. Sept. 5, 2012). First, the Court noted that the potential for simplification of issues through the reexamination was substantial, because “[a]ll the claims involved in this lawsuit currently stand rejected in the reexaminations. If this remains the outcome, this litigation will be terminated.” Id. at 3. Next, although the case had been filed almost eleven months earlier, the Court noted that “essentially nothing has happened in this case beyond the briefing of the instant motion to stay.” On the other hand, “[t]he reexaminations have been pending for over two years and are significantly farther along than the litigation.” Id. at 4. Finally, the Court was not persuaded by the plaintiff’s claims of undue prejudice, “particularly in light of Plaintiff’s agreement to stay the two related actions[]” asserting the same patents against other defendants. Id. at 5. In a footnote, the Court explained that it “recognizes that a patentee has no obligation to agree to stay litigation against a particular defendant or all defendants just because it has previously agreed to stay litigation against other defendants. But such a patentee should expect that the stay of one related action will be an important consideration if the Court must later decide whether to stay another related action.” Id. at 7 n.2.


Smarter Agent, LLC v. MobileRealtyApps.com, LLC, C.A. No. 11-915-LPS (D. Del. Sept. 5, 2012).

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