eSoft, Inc. v. Blue Coat Systems, Inc. 2007 U.S. Dist. LEXIS 11261 District of Colorado, decided Feb. 15, 2007 Judge Nottingham Download PDF of case. Defendant in this case found new prior art and filed for inter partes reexamination claiming the patent at issue is invalid based on no fewer than 23 patent prior art references. The trial date for the litigation had not been set, but discovery was at or near completion. Judge Nottingham notes the advantages of shifting the validity issue to the PTO:

Courts recognize that shifting the patent validity issue to the PTO has many advantages, including: (1) all prior art presented to the court will have been first considered by the PTO, with its particular expertise; (2) the outcome of the reexamination many encourage a settlement; (3) issues, defenses, and evidence will be more easily limited in final pretrial conferences after a reexamination; and (4) costs will likely be reduced both for the parties and the court. Emhart Indus., Inc. v. Sankyo Seiki Mfg. Co., 3 U.S.P.Q.2d 1889, 1890 (N.D. Ill. 1987).

The court continues to analyze each factor in the four factor test which is generally applied when deciding whether a stay should be granted pending reexamination. Those four factors are:

(1) whether a stay will simplify the issues in question and streamline the trial; (2) whether discovery is complete and whether a trial date has been set; (3) whether a stay would unduly prejudice the nonmoving party or present a clear tactical advantage for the moving party; and (4) whether a stay will reduce the burden of litigation on the parties and on the court.

Factors 1 and 4 were analyzed together. Judge Nottingham pointed out

This court’s review of the seventeen pages of the ‘773 Patent suggests that it is anything but “straightforward” to one who does not bring an understanding of information systems and programming to the table.

Plaintiff argued that the possible delay of 2 ââ?¬â?? 5 years in reexamination would cause it to suffer undue prejudice. Such an assertion was insufficient to hold much weight. Rightly so, as that same argument can always be made whenever there is a reexamination. In the interest of justice, the stay was granted.

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