June 10, 2013, Court Declines to Stay Litigation Before Claim Construction

In National Oil Well Varco, LP v Omron Oilfield & Marine, Inc., A-12-CA-77-SS (W.D. Texas June 10, 2013), Judge Sam Sparks of the Western District of Texas denied without prejudice defendant’s motion to stay the litigation pending the resolution of an Inter Partes Review defendant filed challenging the patent in suit.  The Court noted that the parties had largely completed their Markman briefing when defendant “opened up a second front” in its legal battle by filing a petition for Inter Partes Review.  Judge Sparks noted that it woudl be at least five months before the court would know whether an Inter Partes Review had even been declarated, and possibly two years before it was completed.  The Court concluded that it would be a waste of judicial resources to stay the case when the matter is so close to issuance of a Markman order, noting at least one other court that denied a stay in a similar situation.  Universal Elecs., Inc., v Universal Remote Control, Inc., SACV 12-00329 AG, 2013 WL 1876459, at *1 (C.D. Cal. May 2, 2013).  The Court noted taht given other aspects of this case, such as non-Markman discovery having not yet proceeded, a stay might be well taken after a Markman orider has issued, and denied the Motion without prejudice.


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About Bryan Wheelock

Education J.D., Washington University in St. Louis B.S.E. in Mechanical Engineering, Duke University Bryan Wheelock's practice includes preparation and prosecution of patent and trademark applications and drafting of intellectual property agreements, including non-compete agreements. He has brought and defended lawsuits in federal and state courts relating to intellectual property and has participated in seizures of counterfeit and infringing goods. Bryan prepares and prosecutes U.S. and foreign patent applications for medical devices, mechanical and electromechanical devices, manufacturing machinery and processes, metal alloys and other materials. He also does a substantial amount of patentability searching, trademark availability searching and patent and trademark infringement studies. In addition to his practice at Harness Dickey, Bryan is an Adjunct Professor at Washington University School of Law and Washington University School of Engineering.