Appealing A Stay Pending Reexamination II

Posted on | March 6, 2010 | 4 Comments

2010-1155 Sorensen v. Spectrum Brands
SD/CA 09-cv-0058
Judge Barry Ted Moskowitz

Pantentee Sorensen again attempts to appeal from the Order of Judge Barry Moskowitz granting defendants’ motion to stay the case pending reexamination of patent no. 4,935,184.  This is the same plaintiff, patent, judge, and subject as on appeal in 2010-1142.  Defendant in the 2010-1142 action have moved to dismiss the appeal for lack of jurisdiction, but no decision as of yet.

Stay: Orders granting motions to stay pending reexamination are not generally considered “final” and are therefore not generally appealable.  See, e.g., Gould v. Control Laser Corp., 705 F.2d 1340 (Fed. Cir. 1983); Soliami v. Kennametal, 2008-1345 (Fed. Cir. 2008).

However, an exception exists where the stay “effectively could put one of the appellants out of court” or if some “patent issue would escape review by a federal court if the case is stayed.”  See, e.g., Slip Track Sys., Inc. v. Metal Lite, Inc., 159 F.3d 1337, 1340 (Fed. Cir. 1998).  There is nothing in the record to indicate whether any facts supporting the exception exists here, so the appeal may not stick around.

Dismissing/Striking Counterclaims: Before staying the case the Court did grant Sorensen’s motion to dismiss Spectrum’s counterclaims and to strike affirmative defenses on invalidity.  On the counterclaim, the Court used the standard from Ashcroft v. Iqbal, — U.S. –, 129 S.Ct. 1937 (2009) to find the allegations insufficient to state a claim:

Here, Count II of Defendant’s counterclaim is nearly devoid of factual assertions. Defendant only alleges that “[t]he claim of the ‘184 patent are invalid under 35 U.S.C. §§ 101, 102, 103, and/or 112.” This threadbare statement is precisely the type of allegation that is insufficient to state a claim under the Iqbal standard. Accordingly, Count II of Defendant’s counterclaim is DISMISSED without prejudice.

Order, p. 2.  For the motion to strike, the Court applied a similar standard to reach the same result:

Under Rule 8 of the Federal Rules of Civil Procedure, an affirmative defense must be pled with the minimal specificity to give the plaintiff “fair notice” of the defense. Wyshak v. City Nat’l Bank, 607 F.2d 824, 827 (9th Cir. 1979). Here, Defendant’s Affirmative Defense D merely states, “One or more claims of the ‘184 patent are invalid for failure to comply with the conditions of patentability set forth in title 35 of the United States Code, including §§ 101, 102, 103 and/or 112.” Sections 101, 102, 103, and 112 provide several grounds for finding a patent invalid, and Defendant has failed to give Plaintiff fair notice of the basis of its affirmative defense.  Advanced Cardiovascular Syss., Inc. v. Medtronic, Inc., No. C-96-0942, 1996 WL 467273, at *3 (July 24, 1996). Accordingly, Plaintiff’s motion to strike is GRANTED, and the Court strikes Affirmative Defense D from Defendant’s answer without prejudice.

Id. Although these ruling are not on appeal, it is further evidence of what appears to be a trend around the country against accused infringers simply alleging invalidity without any factual allegations in support.  This shouldn’t be a big deal, however, if scheduling orders give some time for discovery and prior art searching before invalidity contentions are due and pleadings closed.

2010-1155 Order on Motion to Stay

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