Motion to Stay Pending Inter Partes Reexamination Denied, Cooler Master Co., Ltd., Case No. C 13-00457 (Judge Jon Tigar)
How's this for office cooler fodder? Cooler Master wanted its district court litigation with Asetek to be put on ice while an inter partes reexamination wound its way through the Patent Office. In a frosty opinion Judge Jon Tigar disagreed. The motion was an unusual one, because only one of the patents-in-suit was actually under reexamination – a factor that was key to Judge Tigar's denial of the stay.
Asetek had previously filed a patent infringement lawsuit against a third party, CoolIT Systems, Inc., which in turn filed a petition for reexamination at the Patent Office for the '764 patent and the '362 patent, however the PTO denied reexamination of the '362 patent. The Patent Office agreed to reexamine the '764 patent and subsequently issued an Action Closing Prosecution after finding that the claims should be invalid. Asetek is challenging that Action. After CoolIT filed its reexamination request, Asetek asserted two patents against Cooler Master, the '362 patent and the '764 patent. But CoolIT had requested reexamination of only the '764 patent, not the '362 patent.
Cooler Master's motion to stay asked the court to stay the case only with respect to the patent being reexamined, namely the '764 patent. Judge Tigar analyzed the request using the following factors: 1) the stage and history of the litigation; 2) whether a stay would simplify the issues; and 3) whether a stay would unduly prejudice or present a clear tactical disadvantage to the plaintiff.
Judge Tigar based his finding as to whether the first and second factors supported a stay upon the extent of overlap between the '362 and the '764 patents. Because most of the figures in the specification were identical and Cooler Master had conceded that the written descriptions were similar, Judge Tigar found a substantial amount of overlap, leading him to conclude that a stay would not simplify the issues by a meaningful amount.
Judge Tigar next looked at four sub-factors pertaining to possible prejudice to Asetek if the stay were granted, namely: 1) the timing of the reexamination request; 2) the timing of the request for stay; 3) the status of the reexamination proceedings; and 4) the parties' relationship.
None of the first three factors were material to Judge Tigar's holding. Judge Tigar found that the "timing of the reexamination request" factor was neutral because by the time Asetek sued Cooler Master, CoolIT had already filed the request for reexamination. The "timing of the request for stay" factor was also found by Judge Tigar to be neutral because he considered Cooler Master to have acted reasonably in waiting until the Patent Office's Action Closing Prosecution after it determined that the claims were invalid. With respect to the third factor, the "status of the reexamination proceedings," Judge Tigar found this factor not helpful because although the PTO has issued an Action Closing Prosecution, it could be years before the reexamination concludes.
But Judge Tigar found the fourth factor, the "relationship of the parties" factor to be significant. Asetek and Cooler Master are direct competitors in the very competitive PC cooling market. A stay that would prolong a judicial resolution would harm Asetek if Cooler Master were indeed infringing and unfairly undercutting Asetek's prices. Although conceding that the issue was a close one, Judge Tigar ultimately warmed up to Asetek's arguments and gave Cooler Master a decidedly chilly reception: no ice; motion for stay denied.
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