The opinion of the court was delivered by: VIRGINIA A. Phillips United States District Judge
[Motion filed on June 12, 2009]
ORDER DENYING MOTION TO STAY EXECUTION OF JUDGMENT PENDING REEXAMINATION [Term and Link Doc. No. 636]
Revolution Eyewear, Inc.'s ("Plaintiff") Motion for Stay of Execution of Judgment Pending Reexamination ("Mot.") came before the Court for hearing on July 6, 2009. After reviewing and considering all papers filed in support of, and in opposition to, the motion, as well as the arguments advanced by counsel at the hearing, the Court DENIES the Motion.
Plaintiff moves for a stay of judgment as it has secured ex parte reexamination by the United States Patent and Trademark Office ("PTO") of claim 22 of United States Patent No. RE37,545 ("claim 22" and "'545 patent", respectively) as of May 29, 2009. (Mot. 1.) Plaintiff sought reexamination based on four United States patents and one Japanese patent, which Plaintiff describes as new prior art references, "some" of which are "newly provided, not of record in the file of the '545 Patent, and not cumulative . . . Some [of which] . . . were disclosed during prosecution of the '545 Patent, but were never cited or relied upon" by the applicant or the patent examiner during prosecution. (Mot. 3; Request for Ex Parte Reexamination of U.S. Patent No. RE37,545 at Declaration of R. Joseph Trojan ("Trojan Decl.") Ex. A-0 at 6, 9, 22 (listing prior art references and describing relevance).) Plaintiff's other grounds for seeking reexamination include obviousness under 35 U.S.C. section 103 and the extent to which claim 22 is anticipated under 35 U.S.C. section 102 by the Japanese patent described as new prior art above. (Mot. 7; Trojan Decl. Ex. A-0 6, 19, 22.)
On April 30, 2007, the Court granted Counterclaimant Contour Optik, Inc.'s ("Contour") Motion for Partial Summary Judgment on the issue of Infringement, holding that Plaintiff infringed claim 22. (See Order Granting Counterclaimant's Motion for Summary Judgment on Infringement, April 30, 2007 ("Infringement MSJ Order").)
On the same day, the Court denied Plaintiff's Motion for Partial Summary Judgment on the issue of invalidity, holding that Plaintiff failed to establish claim 22 was invalid. (See Order Denying Counter-Defendant's Motion for Summary Judgment of Invalidity, April 30, 2007 ("Invalidity MSJ Order").)
This case was tried to a jury in September 2007 on Contour's claim for damages for patent infringement against Plaintiff. The jury returned a verdict awarding damages of $4,319,530.70 to Contour.
Plaintiff's intervening rights defenses were tried to the Court; on January 3, 2008, the Court issued a Memorandum and Opinion on Equitable Issues, Findings of Fact and Conclusions of Law ("Op. of January 3, 2008"), concluding that Plaintiff was entitled to absolute intervening rights and reducing the damages awarded by the jury by $125,964. Accordingly, on February 25, 2008, the Court issued a judgment in favor of Contour awarding damages of $4,193,567. On April 24, 2008, the Court denied Plaintiff's motions for judgment as a matter of law, for new trial, and for remittitur. (See Order Denying Motion for Judgment as a Matter of Law, for New Trial, and for Remittitur, April 24, 2008 ("Remittitur Order").)
On May 27, 2008, Plaintiff filed a Motion for Stay of Execution of Judgment Pending Appeal, challenging the results of the Invalidity MSJ Order, the Infringement MSJ Order, and the Remittitur Order; the Court denied the motion on July 14, 2008.
The next spring, on May 29, 2009, the PTO granted Plaintiff's ex parte reexamination request regarding claim 22. (Mot. 2; Trojan Decl. Ex. B.)
On June 5, 2009, the Federal Circuit affirmed the judgment entered by this Court.
On June 12, 2009, Plaintiff brought the instant Motion, as well as an ex parte application for an order shortening time and an ex parte application for a temporary restraining order. The Court denied the latter two applications in a minute order dated June 17, 2009. Contour, Manhattan Design Studio, Inc., and Asahi Optical Co., Ltd. ...