N.D. Ill. Stays Global Patent Holdings Infringement Claim

Global Patent Holdings LLC v. Green Bay Packers (00-C-4623), April 23, 2008

Back in July of 2000, Global Patent Holdings (GPH) (formerly Techsearch LLC) filed suit against numerous defendants alleging infringement of U.S. patent No. 5,253,341, which claimed an improved method and apparatus for downloading compressed audio and visual data as well as other graphical information from a remote server to an end user station for the purpose of decompressing and displaying the data.

Subsequently, a first reexamination proceeding was carried out, where the Board of Patent Appeals cancelled the 16 claims of the original patent and declared a new claim (claim 17) patentable. During that time, GPH requested and obtained dismissal of its complaint with leave to reinstate the case if the reexamination was resolved in its favor.

On August 8, 2007, Global Patent sued CDW Corporation and Motorola, Inc., in Global Patent Holdings v. CDW Corp., case No. 07 C 4476. In the meantime, a second reexamination request was filed in the PTO, and the Defendants moved to stay the proceedings in the case pending the outcome of the second reexamination procedure.

The district court agreed that a stay was warranted:

Global Patent contends that the PTO has already contributed its expertise to this matter via the first reexamination proceeding and thus there is little to be gained from waiting for the second to run its course. However, as Defendants point out, claim 17 was not in the original patent but was added by amendment during the previous reexamination. The previous reexamination thus functioned as an original examination of that claim rather than a reexamination of a previous stamp of approval, as was the case with the original 16 claims. Moreover, because the reexamination was conducted ex parte, there could be no participation from anyone other than GPH when claim 17 was being examined. Accordingly, the association of claim 17 with the prior reexamination did not result in the same application of the PTO’s expertise on patentability that is available for the original 16 claims that
were rejected.

No discovery has been conducted and little judicial effort has been expended in either of the cases now before us. Though we are mindful that four years was consumed in waiting for the result of the reexamination of the original 16 claims, a significant amount of time and effort in claim construction and other litigation would have been wasted if we had forged ahead without the benefit of the PTO’s examination (and subsequent rejection) of those claims. Also, the fact that this examination will focus on a single claim makes it unlikely that a similar amount of time will be spent in reaching resolution of the new reexamination. The questions of validity, patentability, and claim content are common to the issues before this court and before the PTO, so the more prudent course of action is to stay these cases while the reexamination proceeds. Defendants’ motion requesting that relief is therefore granted.

Download a copy of the opinion here (link)