Patent Case Stayed for Second Reexam
Global Patent Holdings, LLC v. Green Bay Packers, Inc., No. 00 C 4623, Slip Op. (N.D. Ill. Apr. 23, 2008) (Kocoras, J.).
Judge Kocoras reassigned a related case consolidating it with this case and stayed the patent infringement cases pending a second reexamination proceeding. New defendant CDW argued that reassignment of the second case pursuant to Local Rule 40.4 was not appropriate because the first case, which was dismissed without prejudice in light of the first reexam, was filed by TechSearch LLC, instead of the current plaintiff Global Patent Holdings ("GPH"). But original plaintiff TechSearch reopened the case before moving to substitute GPH, the current assignee of the patent in suit and TechSearch's parent, as plaintiff. Because TechSearch reopened the case, the first case retained its first-filed status. The fact that TechSearch and GPH were no longer related entities when the case was reopened was not relevant.
The Court also held that the two cases were related because both accused defendants' websites of infringing the patent because they downloaded or induced others to download JPEG and other files.
Finally, reassignment benefited the judicial economy. Neither case had begun significant discovery, so neither would be delayed. Additionally, consolidation would allow one judge to hear the summary judgment motions, which were expected to be numerous, that would apply equally to all parties. The Court, therefore, reassigned the related case to itself.
The Court also stayed the cases pending the reexam. The first reexam resulted in cancellation of each of the original sixteen claims and the issuance of a single, new claim. GPH argued that a second reexam was unlikely to yield new rejections because the patent had been vetted twice. But the Court noted that the original ex parte reexam acted as a first examination of the single, new claim that issued from the reexam. Additionally, the original ex parte reexam did not allow for third party participation. The current inter partes reexam does, generating a more rigorous review of the claim. Finally, the case was delayed four years for the first reexam. Significant judicial resources would have been wasted had the case proceeded on the original sixteen claims, which the PTO ultimately rejected. The Court did not want to risk wasting judicial resources during the second reexam. And with only a single claim, the Court did not expect the second reexam to take four years. The case, therefore, was stayed pending the reexam.
