Stay Pending Reexam Granted

Visto Corp. v. Research in Motion Ltd, et al, 2:06cv181 (E.D. Tex. July 2, 2008)
Judge: Chad Everingham
Holding: Defendant's Motion to Stay GRANTED conditionally
Orders on motions to stay pending reexamination are of perennial interest locally, and this one will likely be of particular interest.  Defendant RIM filed this motion to stay in April 2008, and Judge Everingham considered the briefing and argument presented at the recent pretrial conference before issuing this order granting the stay, but with conditions.  But the context of the motion was dispositive of his ruling, Judge Everingham noted.
Visto intended to assert sixteen claims at trial, the Court observed, but six had been amended by Visto during reexam and thus could not yet be tried.  The other ten were in reexam, and thus could "theoretically" be tried, but are subject to varying states of reexam.  Some have a notice of allowance, while others are subject to a non-final rejection.  RIM's motion asserted the usual "but reexam will simplify the issues to be tried" and Visto responded with the usual "but a stay will prejudice us and delay trial settings unreasonably."
"The court is mindful of Visto’s concerns regarding the effect of reexamination proceedings on pending litigation–particularly trial settings," Judge Everingham wrote.  "This argument is not without force, and the case law is replete with examples of motions to stay being rejected in part because of this valid concern. Nevertheless, the fact remains that the claims asserted by Visto in this and other litigations have been narrowed in various reexamination proceedings. Indeed, Visto seeks to sever six amended claims to preserve its ability to try those claims in future proceedings. . . . A stay of this particular case pending the final disposition of the reexamination proceedings is more likely to streamline the issues for trial than it would in the usual case."
Judge Everingham noted that Visto had recognized this in the Visto v. Seven litigation and, more recently, in the Visto v. Good litigation. See Visto v. Seven, No. 2:03-CV-333 (E.D. Tex. Sept. 1, 2005) (order granting stay); Visto v. Good, No. 2:06-CV-039 (E.D. Tex. Mar. 27, 2008) (order granting stay). In those cases, Visto petitioned (or at least agreed) to delay the trials until the reexamination proceedings yielded answers to outstanding questions of patentability. "Visto has not offered a persuasive reason why the court should treat this case differently. The court has crafted a stipulation that provides adequate safeguards to temper the prejudice resulting from a short stay of this case: RIM must agree not to challenge the validity at trial of the patents-in-suit based on prior art patents or printed publications that were considered in the reexamination proceedings, and RIM shall not directly or indirectly institute any further reexamination proceedings." The court therefore granted RIM’s motion to stay, conditioned on the execution of this stipulation.