BarTex Research LLC v. Fedex Corp., 6:07-CV-385 (E.D. Tex., April 20, 2009)
BarTex sued FedEx in August 2007 alleging infringement of a Scott Harris patent directed to a "bar code data entry device." While the suit was pending, pleadings were filed in an Illinois litigation stating that the Fish & Richardson law firm (Harris’s former employer) had asserted ownership over some of Harris’s patents, including the patent-in-suit. BarTex filed for Partial Summary Judgment of ownership in the Texas case, and the court granted BarTex's motion on November 2008.
Just over a month later, FedEx filed an inter-partes reexamination action that subsequently resulted in an Office Action rejecting all claims. FedEx then filed for a motion to stay. If you didn't guess, the court denied the motion.
Again, the Institute for Progress's report on inter-partes reexamination was the deal breaker:
Although the PTO reports that the average pendency of an inter partes reexamination is 28.5 months, if the patent holder decides to defend its rights, the process is likely to require an average of 43.5 months. Id. (citing Institute for Progress, Reexamining Inter partes Reexam (2008)). If the decision is appealed, it is estimated that the entire process will require an average of 78.4 months, although this estimate may be subject to change since there has never been an inter partes reexamination that has gone through the entire reexamination process, including appeal, and made it to completion. Id. BarTex argues that granting the stay would prevent BarTex from licensing the ‘377 patent for 6.5 years and eviscerate BarTex’s right to exclusivity until at least 2016.
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The Court finds that BarTex would be unduly prejudiced if the Court were to grant a stay. A stay could potentially prevent BarTex from enforcing its rights for 6.5 years. This extreme delay, which has been exacerbated by FedEx’s delay in requesting reexamination, could allow for a loss of critical evidence as witnesses could become unavailable, their memories may fade, and evidence may be lost.
The kicker in this case was that BarTex, recognized as a non-practicing entity, successfully argued that the delay from the inter partes proceedings would unduly prejudice potential injunctive relief.
