The opinion of the court was delivered by: Hon. Maxine M. Chesney United States District Judge
ORDER GRANTING VISTO'S MOTION TO STAY PROCEEDINGS RELATING TO RESEARCH IN MOTION LIMITED'S PATENT PENDING REEXAMINATION
Before the Court is Defendant and Counterclaimant Visto Corporation's ("Visto") motion, filed May 21, 2008, to stay proceedings related to Plaintiff and Counter-defendant Research In Motion Limited's ("RIM") patent, U.S. Patent No. 5,889,839, pending reexamination of said patent by the United States Patent and Trademark Office. On June 6, 2008, RIM filed a Statement of Nonopposition to the motion. Having considered the papers submitted in support of 6 the motion, the Court rules as follows. consider three factors:
(1) whether discovery is complete and whether a trial date has been set;
(2) whether a stay will simplify the issues in question and trial of the case; and
(3) whether a stay would unduly prejudice or present a clear tactical disadvantage to the non-moving party.
When determining whether to grant a stay pending reexamination of a patent, courts See Nanometrics, Inc. v. Nova Measuring Instruments, Ltd., 2007 WL 627920 at *2 (N.D. Cal. 2007).
In the instant case, the Court finds each of the factors weighs in favor of granting a stay.
In particular, with respect to the first factor, discovery is in its early stages, and, although trial has been set, it is set for nearly a year in the future. Further, no claim construction hearing has been 17 held nor any claim construction ruling issued. Nor have any dispositive motions been filed.
With respect to the second factor, the Court finds it probable, based on the statistical evidence provided, that upon reexamination the United States Patent and Trademark Office will take some action that results in canceling or altering one or more of the claims at issue and, accordingly, a stay would likely narrow and clarify the issues for trial.
Lastly, with respect to the third factor, the Court finds that a stay would not present a clear tactical disadvantage to RIM. The delay in having patent infringement claims adjudicated in court, does not, by itself, constitute undue prejudice. See, e.g., id. at *3 ("Mere delay, without more . . ., does not demonstrate undue prejudice."); see also Photoflex Products, Inc. v. Circa 3 LLC, 2006 WL 1440363 at *2 (N.D. Cal. 2006) (holding "delay inherent to the reexamination process does not constitute, by itself, undue prejudice").
For the reasons set forth above, Visto's motion to stay is hereby GRANTED.
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