IP Law Daily, PATENT—D. Mass.: Lighting manufacturers lose bid to stay litigation following request for inter partes re-examination of Boston University’s LED patent, (Jul 12, 2013)

By Cheryl Beise, J.D.

A motion to stay patent infringement litigation filed by the Trustees of Boston University (“BU”) against numerous LED lighting and component manufacturers was denied by the federal district court in Boston because the USPTO had not yet made a threshold determination of whether to undertake an inter partes review of BU’s asserted patent claims (Trustees of Boston University v. Everlight Electronics Co., Ltd., July 11, 2013, Saylor, F.).

BU filed a number of patent infringement actions, consolidated before the court for pre-trial proceedings, to enforce claims relating to LED technology in BU’s U.S. Patent No. 5,686,738 (the '738 patent), issued November 11, 1997, and titled “highly insulating monocrystalline gallium nitride thin films.”

On May 22, 2013, shortly after the start of discovery, the defendants in three of the actions—Everlight Electronics Co., Ltd., Everlight Americas, Inc. (collectively “Everlight”); and Lite-On Inc., Lite-On Service USA, Inc., Lite-On Trading USA, Inc., and Lite-On Technology Corporation (collectively “Lite-On”); and Epistar Corporation— jointly filed a petition for inter partes review of the '738 patent with the USPTO.

Everlight, Epistar, and Lite-On jointly moved to stay the litigation pending the PTO’s inter partes review of the '738 patent.

In patent actions, courts generally evaluate motions to stay pending re-examination based on three considerations: (1) whether a stay would unduly prejudice or present a clear tactical disadvantage to the non-moving party; (2) whether a stay will simplify the issues in question and trial of the case; and (3) whether discovery is complete and whether a trial date has been set.

BU, as the patent holder, had three months to file a response to the defendants’ inter partes review petition. Pursuant to 35 U.S.C. § 314(a), the PTO may grant a petition and institute inter partes review only if it “determines that the information presented in the petition…and any response…shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” According to the timeframe established in section 314(b), the PTO in this case would be required to make its threshold determination by November 22, 2013, the court observed.

Because the PTO had not yet determined to undertake a re-examination of the '738 patent, it was premature for the court to analyze a “potential reexamination” as cause for a stay, according to the court. Furthermore, a stay in this case could seriously prejudice BU because the '738 patent is set to expire in November 2014, and re-examination takes on average 18-24 months to complete, the court added.

Under the circumstances, the court declined to halt discovery and delay the litigation before the PTO determined whether re-examination through inter partes review was warranted. The defendants’ motion to stay the litigation was accordingly denied, but without prejudice to renewal should the PTO later determine to initiate the review.

The case is No. 12-11935-FDS, No. 12-12326-FDS, and No. 12-12330-FDS.

Attorneys: Ilan N. Barzilay (Seyfarth Shaw LLP) for Trustees of Boston University. Christopher S. Schultz (Finnegan, Henderson, Farabow, Garrett & Dunner, LLP) for Everlight Electronics Co., Ltd.

Companies: Trustees of Boston University; Everlight Electronics Co., Ltd.; Everlight Americas, Inc.; Epistar Corp.; Lite-On Inc.; Lite-On Service USA, Inc.; Lite-On Trading USA, Inc.; Lite-On Technology Corp.

Cases: Patent MassachusettsNews