The District Court For The Eastern District Of Texas Denies Motion To Stay Pending Ex Parte Reexamination
On January 6, 2022, Chief Judge Gilstrap of the United States District Court for the Eastern District of Texas denied a motion to stay pending ex parte reexamination (“EPR”) of the patent asserted in the litigation, and found that defendant was relying on the EPR as part of a strategy of “examiner shopping.” Longhorn HD LLC v. NetScout Systems, Inc., 2-20-cv-00349.
Section 302 of the patent statute permits any person to file a request for EPR of any patent. 35 U.S.C. § 302. If a request for EPR is granted, a new patent examiner will reexamine the patentability of the issued claims of the patent in view of prior art cited during the EPR. Unlike proceedings in an inter partes review (“IPR”), which also provide an avenue for post-grant review of a granted patent by the patent office, the patent statute does not require that the patent office render a decision on the EPR by a certain deadline.
A non-party to the Longhorn litigation filed a request for EPR of the asserted patent nine months after plaintiff Longhorn HD LLC filed its complaint. The request for EPR was based on prior art that was presented to the patent office during the original prosecution of the application leading to the asserted patent. The patent office granted the request for EPR, and preliminarily rejected all claims of the asserted patent. Defendant NetScout Systems, Inc. (NetScout) then moved for a stay pending completion of the EPR.
In denying the motion for a stay, Judge Gilstrap contrasted the IPR and EPR procedures, noting that “unlike an IPR, there is no timeline for the duration of an EPR.” Judge Gilstrap observed that the average EPR lasts 25.7 months, whereas, the patent office is required by statute to issue a decision on an IPR within 18 months. This delay, combined with the nine-months delay in the filing the EPR, meant that the case would be stayed for well over two years. Moreover, any party could file follow-on EPRs at any time, which risked “un-ending EPRs.”
Judge Gilstrap also found no evidence that the EPR will result in a simplification of the issues at trial. Instead, the court faulted NetScout for filing an IPR that relied on arguments not in the non-party’s EPR, and then moving to stay on the basis of the non-party EPR “which makes arguments that NetScout has apparently concluded are not meritorious enough to make.” Judge Gilstrap viewed this as an attempt by NetScout of “examiner shopping,” whereby prior art that was before the patent office during the original prosecution of the asserted patent was now being considered by a different examiner.