Telemac Corp. v. Teledigital Inc. and Phonetec N.D. Cal., decided Sept. 13, 2006 Judge Wilken Defendants can ask the court for a stay in the proceeding for the reason of a reexamination by the USPTO. This may lengthen the trial significantly: ââ?¬Å?[T]he average pendency of reexamination before the PTO is 19.2 months, not including appeals.ââ?¬Â? Telemac, 2006 WL 2632560 (citing Xerox Corp. v. 3Com Corp., 69 F.Supp.2d 404, 406 n. 1 (W.D.N.Y.1999)). Judge Wilken reviewed and denied Defendantââ?¬â?¢s request for reexamination. It is important to know how Judges are ruling on this issue because it is a discretionary ruling.

In determining whether to stay this case pending re-examination, the Court considers the following factors: (1) whether discovery is complete and whether a trial date has been set [stage of the proceedings]; (2) whether a stay will simplify the issues in question and trial of the case [simplification]; and (3) whether a stay would unduly prejudice or present a clear tactical disadvantage to the nonmoving party [undue prejudice or clear tactical advantage].

Telemac, 2006 WL 2632560 (citing In re Cygnus, 385 F.Supp.2d, 1022, 1023 (N.D. Cal 2005). Judge Wilken conducted a formulistic analysis of each of the three factors. The stage of the proceedings did not weigh heavily in either direction because the case had been ââ?¬Ë?aliveââ?¬â?¢ for 18 and 27 months (respectively for the 2 defendants, Teledigital and Phonetec), but no substantial discovery had taken place. The simplification that would occur by the reexam likewise did not weigh heavily in favor of either party. Chances were just as good that some claims would be removed as some claims would remain. Judge Wilken felt familiar with the patents at issue so the simplification was not as high as it usually would be. The clear tactical advantage that would be gained by the Defendants was the factor which convinced Judge Wilken to deny the request for reexam. Evidence had shown the Defendants may not have the resources to fully compensate the Plaintiff if infringement was found. Further, the Defendants seemed to be drawing the reexam out as long as they could by not providing all necessary information in their requests to the PTO for reexamination. The Judge also noted a possibility that information could be lost, as Phonetec had already failed to preserve some records. Essentially the stay was denied because Judge Wilken sensed the Defendants were requesting the reexamination in order to delay litigation and resolution of the matter and no clear advantage was offered by having the PTO reexamine the patents.