Judge Sue L. Robinson recently considered plaintiff’s motion to stay pending reexamination. Gevo, Inc. v. Butamax Advanced Biofuels LLC, et al., C.A. No. 12-301-SLR (D. Del. Feb. 18, 2014). The parties were competitors in the development of “isobutanol technology.” Id. at 2. While the litigation was pending Butamax initiated a reexamination of the patent in suit. After conducting discovery, plaintiff provided defendant Butamax with a covenant not to sue “for the use of ‘Accused Technology,’ defined as certain modified recombinant microorganisms.” Id. at 3. Butamax refused to dismiss its counterclaims, however, and the Court denied a motion to dismiss the claims, based in part “on the cloud cast over Butamax’s research and development efforts from an unclear covenant not to sue.” Id. Judge Robinson determined that in light of the pending reexamination, in which the PTO initially rejected all claims of the patent-in-suit, and the fact that fact discovery and claim construction was complete, a stay would be appropriate:
The parties are preparing for trial in about six months, however, rejection of the patent by the PTO would moot Butamax’s counterclaims of invalidity (the only remaining claims to be litigated). Having considered the arguments put forth by both parties, and considering the time and expense of litigation, the court grants Gevo’s motion to stay the case only until the PTO issues the Right to Appeal Notice. At that time, the parties will have 60 days to resurrect the litigation if they so desire.