THOMAS P. GRIESA, District Judge.
Baseball Quick brings this action for patent infringement against MLB Advanced Media. At issue is Baseball Quick's U.S. Patent No. 7, 628, 716 which teaches, generally speaking, a method for producing greatly shortened video recordings of baseball games - around 15 minutes in length - and distributing these recordings to subscribers.
The case is currently in the claim construction stage. After Baseball Quick submitted its opening claim construction brief, however, MLB requested inter partes reexamination by the USPTO of the patent at issue. MLB now moves to stay the proceedings in this court pending the outcome of that reexamination.
The motion is denied.
This suit was originally brought on August 23, 2010 in the Southern District of California. After four joint motions extending MLB's time to answer, MLB eventually answered the complaint on January 3, 2011. On MLB's motion, the case was then transferred to this court on March 14, 2011. MLB then moved, on June 22, 2011, for summary judgment. On March 30, 2012, the court substantially denied that motion -and Baseball Quick's related motions for sanctions and for discovery - except as it related to activity that began before the 716 patent was issued. In fact, MLB ultimately conceded one of the primary grounds of its own motion in its reply brief. The claim construction process then began with a joint claim construction statement filed on October 19, 2012. Baseball Quick filed its opening claim construction brief on November 11, 2012 to which MLB filed its opposition on December 21, 2012. Meanwhile, on September 14, 2012, MLB had filed a request for inter partes reexamination of the 716 patent with the USPTO. It then filed a motion to stay this action pending the USPTO's reexamination, along with its opposition to Baseball Quick's claim.
The Reexamination Proceedings
MLB's request for inter partes reexamination of the 716 patent raised ten grounds for the USPTO's rejection of the patent, arguing that its claims were anticipated by or obvious in view of certain combinations of various prior art patents and publications. On November 21, 2012, the USPTO granted MLB's request for inter partes review and issued an "Office Action" which rejected claims one through five of the 716 patent.
The parties, naturally, disagree over the strength of MLB's reexamination petition and what the Office action portends for the USPTO's ultimate reexamination decision. Both sides find comfort in various statistics published by the Commissioner for Patents regarding inter partes reexamination filings.
The court takes the middle path and concludes that none of these statistics are of much use is resolving the present motion - the statistics provided by the Commissioner for Patents are simply too general to serve as a reliable indicator of the outcome of this particular reexamination given its own procedural and substantive characteristics.
But there is one statistic that the parties do appear to agree upon, and that is that the reexamination process may be expected to drag on for an extremely long time. The reexamination itself is likely to take three years, and appeals within the USPTO will take another three. Thus, if the court stays this litigation pending the ultimate conclusion of the USPTO's reexamination of the 716 patent, the case cannot be expected to resume until the year 2019 - and this does not include a highly probable appeal by the losing party to the Federal Circuit.
The decision whether or not to impose a stay pending the resolution of parallel USPTO reexamination proceedings is left almost entirely to the court's discretion. See, P&G v. Kraft Foods Global, Inc. , 549 F.3d 842, 849 (Fed. Cir. 2008).
In its exercise of this discretion, the court considers two sets of competing considerations. On one hand, the court must weigh Congress' supposed intent that courts should freely grant stays of litigation pending USPTO reexamination. Congress clearly intended that the reexamination process could serve as a relatively streamlined and inexpensive means of resolving challenges to a patent's validity, taking advantage of the USPTO's specialized expertise, and thus eliminating or reducing the complexity of infringement litigation in the courts. On the other hand, however, the court must beware that a long stay of litigation, especially when requested after the suit's earliest stages, can seriously prejudice a plaintiff and place her at a serious tactical disadvantage. See Spread Spectrum ...