Judge Stark recently considered Google’s motion to stay pending reexamination of the patents in suit. Google filed its motion after the PTO issued a Final Office Action rejecting all asserted claims U.S. Patent No. 7,685,276, and issued an Action Closing Prosecution finding all asserted claims of U.S. Patent No. 6,981,040 invalid. Personalized User Model, LLP v. Google, Inc., C.A. No. 09-525-LPS (D. Del. Oct. 31, 2012). Judge Stark found that the potential for a stay to simplify issues favored granting a stay, “but only slightly.” “Given that all asserted claims of both patents-in-suit stand rejected . . . there is a signficant likelihood that [the case may ultimately be dismissed], resulting in maximum ‘simplification’ of this litigation by ending it.” Id. at 2. However, Judge Stark noted that final conclusion of the reexaminations, with appeals, could last longer than it would take to bring the case to trial, and there were infringement and validity issues that could not be addresssed by reexamination. Id. More significantly, the stage of the litigation strongly disfavored stay. Judge Stark noted that “the fact that Google waited to seek a stay until after the parties, and the Court, had invested substantial resources in this case is a central consideration in the Court’s evaluation.” Id. at 2-3. Although there was not trial set, claim construction and fact discovery were complete, expert discovery was set to close November 14, 2012 and case dispositive motions were due shortly thereafter. Id. at 3.
Personalized User Model, LLP v. Google, Inc., C.A. No. 09-525-LPS (D. Del. Oct. 31, 2012)[scribd id=111942657 key=key-qvlqzg3ipvoe1q7yk0a]