| And to help you, here's the order the judge issued after the Federal Circuit
found that he'd goofed, where he lays out his reasons for not waiting until the
USPTO could finish, and it boils down to this: he says
he believes in the rights of patent holders and it would take too long to wait
for the USPTO. That is it in a nutshell, but so you can see what I mean and
judge for yourself, here's how it reads, but I went to the trouble of doing this
to encourage everyone to research deeper than just Wikipedia articles, because
legal issues are a lot more complex than they usually show you, simply because
they rely on media articles, and as you should know by now, they are not
reliable indicators:
****************
NTP, INC., Plaintiff,
v.
RESEARCH IN MOTION, LTD.,
Defendant.
Civil Action Number
3:01CV767-JRS
IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN
DISTRICT OF VIRGINIA
RICHMOND DIVISION
______________
MEMORANDUM
OPINION
THIS MATTER comes before the Court on Research in Motion, Ltd.’s
(“RIM”) Motion for Stay of Proceedings Pending Reexamination of NTP, Inc.’s
Patents-in-Suit, filed on November 10, 2005. For the reasons discussed herein,
RIM’s Motion for Stay of Proceedings is hereby DENIED.
I.
A. Brief
Procedural History
Plaintiff NTP, Inc. (“NTP”) filed suit against RIM in this
Court on November 13, 2001,
alleging that several dozen system and method claims
from its patents-in-suit had been infringed by RIM’s BlackBerry wireless email
devices and services. Drawn out discovery disputes, claim construction issues,
multiple motions for summary judgment, countless pre-trial motions, and many
evidentiary objections set the tone for a complex, contentious path toward a
resolution of this case. Numerous time extensions were granted to the parties in
the months leading up to trial.
Nearly one year after the Complaint was
filed, a thirteen-day jury trial commenced on November 4, 2002. On November 21,
2002, the jury returned a verdict finding direct, induced, and contributory
infringement by RIM on all of NTP’s asserted claims. Shortly thereafter, RIM
moved
for a judgment as a matter of law or, in the alternative, a new
trial. After denying both requests, this Court entered its final judgment in
NTP’s favor on August 5, 2003. Apart from monetary damages, the Court entered a
permanent injunction against RIM, which was stayed pending RIM’s appeal to the
United States Court of Appeals for the Federal Circuit.1
On August
2, 2005, the Federal Circuit issued its ruling which affirmed-in-part,
reversed-in-part, and vacated-in-part this Court’s judgment. See NTP, Inc. v.
Research in Motion, Ltd., 418 F.3d 1282, 1326 (Fed. Cir. 2005). In analyzing the
case on remand, this Court must now consider what effect, if any, the Court’s
misconstruction of the “originating processor” term might have had on the jury’s
assessment of damages and on the scope of the injunction.
B. RIM’s Motions to
Stay the Proceedings
Over the course of this litigation, at both the trial
and appellate levels, RIM has moved on four separate occasions to stay the
proceedings based at least in part on the ongoing reexamination of the
patents-in-suit by the United States Patent and Trademark Office (the
“PTO”).2 RIM’s first three attempts were unsuccessful. This Court
chose not to grant RIM’s first Motion to Stay, which was finally deemed moot on
August 5, 2003, after the permanent injunction was stayed pending RIM’s appeal
to the Federal Circuit. The Federal Circuit denied RIM’s second Motion to Stay
on October 29, 2003, well over a year before issuing its final ruling. Most
recently, the Federal Circuit denied RIM’s third Motion to Stay3 on
October 21, 2005, over two months after issuing its ruling.
After
denying RIM’s third Motion to Stay, the Federal Circuit issued a mandate to this
Court to begin final remand proceedings.
The Motion presently before the
Court is RIM’s fourth attempt to stay the proceedings. In this Motion, echoing
its previous requests, RIM moves the Court “to stay proceedings in this
litigation until the . . . [PTO] issues its final actions on its reexaminations
of the patents-in-suit.” RIM’s Mem. Supp. 1. RIM believes that the PTO will
begin to issue final actions on its reexaminations of the patents-in-suit in the
next few months and contends that it is “highly likely” that the result of the
PTO’s reexamination proceedings will be to invalidate the patents-in-suit. Id.
As such, RIM argues that considerations of judicial economy and fairness weigh
in favor of issuing a stay of the proceedings.
II.
The question before
this Court is whether or not these proceedings, which must be conducted
pursuant
to the Federal Circuit’s mandate, should be stayed pending the PTO’s
reexamination of several of the patents-in-suit, a process of uncertain
duration.
It is well-settled law that a district court may exercise its
discretion when ruling on a motion to stay proceedings pending reexamination of
the patents-in-suit by the PTO. See Viskase Corp. v. Am. Nat’l Can Co., 261 F.3d
1316, 1328 (Fed. Cir. 2001). A court is under no obligation to delay its own
proceedings by yielding to ongoing PTO patent reexaminations, regardless of
their relevancy to infringement claims which the court must analyze. See id.
(“The [district] court is not required to stay judicial resolution in view of
the [PTO] reexaminations.”); see also Medichem, S.A. v.
Rolabo, S.L., 353
F.3d 928, 936 (Fed. Cir. 2003) (“[O]n remand, a stay of proceedings in the
district court pending the outcome of the parallel proceedings in the PTO
remains an option within the district court’s discretion.”) (stated in the
context of reissue proceedings for interfering patents before the Board of
Patent Appeals and Interferences); Patlex Corp. v. Mossinghoff, 758 F.2d 594,
602–03 (Fed. Cir. 1985) (recognizing judicial discretion in stay determinations
for patent proceedings).
A. The Federal Circuit’s Guidance
Looking to the
most recent and relevant case law precedent in the Federal Circuit, the Court
finds the Viskase case particularly useful. When juxtaposed with the
circumstances surrounding the instant Motion, the Viskase case bears several
important similarities. In Viskase, the PTO began a reexamination of the
patents-in-suit after the trial court had already found infringement. Like RIM,
the infringing party in Viskase moved the district court to stay the proceedings
based partly on the conclusions the infringing party predicted the PTO would
reach after the reexamination. The district court declined to impose a stay, and
the Federal Circuit affirmed the lower court’s decision. See 261 F.3d at
1327–28.
As NTP emphasizes in its Memorandum in Opposition, the PTO
reexamination proceedings in Viskase were in more advanced stages than the PTO’s
ongoing reexamination of NTP’s patents-in-suit. The Court is not persuaded that
the PTO will issue final actions in RIM’s favor “within the next few months,” as
RIM asserts. RIM’s Mem. Supp. 6. The PTO has not even finished issuing all of
its first actions. Furthermore, NTP will have the opportunity and has already
indicated its intention to respond to the first actions. The PTO, after
considering NTP’s responses, will then issue another office action which may or
may not be “final.” Even in the unlikely event that all final office actions
were taken in the next few months, NTP, if not satisfied, could appeal the PTO’s
findings.
Reality and past experience dictate that several years might
very well pass from the time when a final office action is issued by the PTO to
when the claims are finally and officially “confirmed” after appeals. See, e.g.,
In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359 (Fed. Cir. 2004) (affirming the
claim construction of the Board of Patent Appeals and Interferences in a case
where, after numerous rehearing requests and appeals, the PTO’s findings were
not confirmed until ten years after a reexamination was first requested).
B.
The History and Present Status of This Litigation
Perhaps the most
influential tool the Court can use to analyze RIM’s Motion is to simply
trace
the history of this litigation. NTP and RIM participated in a lengthy, complex,
fair, and fully exhaustive trial process at the end of which a jury of the
parties’ peers found that RIM had infringed NTP’s patents-in-suit. RIM had the
opportunity to appeal and did so. Two years later, the Federal Circuit, although
reversing and vacating certain aspects of this Court’s judgment, affirmed
several of the findings of infringement and issued a mandate directing the Court
to begin proceedings on the remanded issues.
RIM now seeks to halt the
proceedings yet again through its most recent Motion to Stay. This Court and the
Federal Circuit have already denied similar, and in some ways identical, motions
by RIM three times—and correctly so. Nothing has changed that would make the
Court more inclined to grant RIM’s request. If anything, the Federal Circuit’s
direct mandate to this Court to proceed on remand so that this litigation may be
quickly resolved would make RIM’s burden on this Motion even heavier.
The
likely duration and result of the PTO’s reexamination proceedings and any
subsequent (and likely) appeals are in dispute. RIM, turning a blind eye to the
many steps that must still be
taken before a final determination can be
issued by the PTO and confirmed, suggests that the patents-in-suit will be
invalidated in a matter of months. NTP, on the other hand, insists on the
likelihood of the opposite result and gives a reality-based estimated time frame
of years. Regardless of which party’s predictions this Court might adopt, any
attempt at suggesting a likely time frame and outcome of the PTO reexamination
process is merely speculation. This Court cannot and will not grant RIM the
extraordinary remedy of delaying these proceedings any further than they already
have been based on conjecture.
III.
The Court recognizes the rights of a
patent holder whose patents have been infringed.
Indeed, the essence of
patent protection is that a party legally deemed to have infringed one or more
patents shall be liable to the patent holder for damages. Valid patents would be
rendered meaningless if an infringing party were allowed to circumvent the
patents’ enforcement by incessantly delaying and prolonging court proceedings
which have already resulted in a finding of infringement.
The Court intends to
comply with the Federal Circuit’s mandate and move this litigation forward so as
to bring closure to this case on remand. Derailing these proceedings when a
resolution is in sight would be ill-advised at best.
For these reasons, RIM’s
Motion for Stay of Proceedings Pending Reexamination of NTP, Inc.’s
Patents-in-Suit is hereby DENIED.
An appropriate Order shall
issue.
ENTERED this 30th day of November, 2005
/s/ James R.
Spencer
UNITED STATES DISTRICT JUDGE
_________
1 RIM filed
its Notice of Appeal on August 29, 2003.
2 In January 2003, the
PTO announced that it would begin to reexamine several of the
patents-in-suit.
3 RIM’s third such motion was styled as a “Motion
to Stay Issuance of the Mandate Pending Filing and Disposition of Petition for
Writ of Certiorari.” Although RIM’s brief in support mainly discussed a
jurisdictional issue, RIM did present much of the same “stay pending PTO
reexaminations” logic as was argued in support of the other two motions. [ Reply to This | Parent | # ]
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