Portal Technologies LLC v. Yahoo!, 2:11cv440 (1/3/13)
Judge: Rodney Gilstrap
Holding: Emergency Motion to Stay Pending Reexamination
Remember that scene in The Princess Bride where Inigo Montoya takes issue with another character's use of the word "inconceivable", saying "[y]ou keep using that word. I do not think it means what you think it means."
Yep, we're talking about the USPTO's use of the word "final."
In this case the defendant sought a stay pending reexamination following the PTO's Action Closing Prosecution ("ACP") rejecting all claims of the patent. Judge Gilstrap didn't think that action was as final as the defendant did. His exposition of what "final" actually means is worth repeating:
The Court believes that “final” does not always have its plain and ordinary meaning at the USPTO. In this particular instance, the patent owner has the right to make a submission to the patent examiner under 37 CFR 1.951(a) in response to the recently issued ACP. MPEP § 2673. This submission effectively initiates another round of arguments before the USPTO's patent examiner, after which the examiner may reverse the rejection and allow the claims. Further, reexamination does not end even if the examiner maintains the rejection of the claims. Should that happen, a Right of Appeal Notice (“RAN”) will be issued, freeing the parties to appeal the examiner’s decision to the USPTO Patent Appeals Board. The USPTO Appeals Board will take up the case and hear another round of arguments. If the Appeals Board maintains the rejection of the claims, the patent owner may appeal the rejection of the claims to the United States Court of Appeals for the Federal Circuit. An Action Closing Prosecution is far from a “final” rejection. Here it is apparent that the reexamination proceedings in this matter are still very far from complete and the final outcome at the USPTO is at least several years away. It is hard for this Court to understand Yahoo’s possible justification for asserting this Motion to be an “emergency” when confronted with the practical realities of practice before the USPTO as outlined above.
Judge Gilstrap reviewed the motion under the Soverain three prong test and found that a stay was not warranted. "First, a stay would prejudice Portal’s interest in the timely enforcement of its patent rights. Second, a stay will not simplify issues in question because, as noted above, the reexamination is very far from complete. Third, discovery is well-underway, a trial date has been set and the parties are nearly complete with Claim Construction briefing." Accordingly, Judge Gilstrap denied the emergency motion for stay.
