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Chief Judge Stark denies motion to stay pending resolution of inter partes reexamination, makes ruling regarding disputed priority dates.

Chief Judge Stark recently denied a plaintiff’s motion to stay litigation with respect to a counterclaim for infringement of patent claims that stood rejected by the PTAB.  Fairchild Semiconductor Corp., et al., v. Power Integrations, Inc., C.A. No. 12-540-LPS (D. Del. Apr. 15, 2015).  The Court explained, “[w]hile a stay would minimally simplify the case set for trial, it would also unfairly prejudice [the defendant].  The most prominent and weighty factor under the circumstances is that discovery is completed and the parties and the Court are preparing for trial, which will begin in about six weeks.  Under the totality of the circumstances, the Court concludes that the appropriate exercise of its discretion is to deny [the plaintiff’s] motion to sever and stay.”  Id. at 7-8.

Judge Stark also ruled on cross-motions for summary judgment relating to priority dates.  One of the plaintiff’s defenses to a counterclaim of infringement was invalidity based on one of the plaintiff’s own patents, which it argued was prior art based on filing dates.  Id. at 15-16.  The defendant disagreed that the plaintiff’s patent was prior art, arguing that the defendant’s patent was entitled to an earlier priority date based on pre-filing conception and reduction to practice.  Chief Judge Stark found that the defendant produced corroborating evidence of a conception date that preceded the plaintiff’s patent filing date, and also that the inventors of the defendant’s patent “were continuously diligent in reducing the invention to practice” before the plantiff’s patent filing date.  Id. at 20-21.  As a result, the Court ruled that the plaintiff’s patent could not be invalidating prior art.

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