Judge Thomas Griesa
Baseball Quick sued MLB Advanced Media for infringing its ’716 patent. It submitted its claim construction brief on Nov. 11, 2012. MLB filed its opposition thereto on Dec. 21, 2012, On Sept. 14, MLB sought inter partes reexamination of the ’716 patent by the U.S. Patent and Trademark Office (USPTO). On Nov. 21 the USPTO granted MLB’s request, and rejected five of the patent’s claims. District court denied MLB a stay action pending the outcome of the patent’s reexamination, which with appeals within the USPTO was likely to take six yearsnot including probably appeal to the Federal Circuit. Assessing the three factors in Spread Spectrum Screening v. Eastman Kodak, the court found action should not be stayed. If a stay were granted, the case would likely have been pending for eight yearsor longerbefore resolution, prompting concerns about unavailability of key witnesses. Further, the parties’ action will be ready for trial in a fraction of the time needed to complete the reexamination process. Moreover, the court’s own evaluation of the patent during claims construction and possible summary judgment proceedings may prove instructive in reaching settlement, or may accurately anticipate the USPTO’s conclusion.
