Court Grants Zep Solar’s Motion to Stay pending Reexamination of Akeena Solar’s Patent

On April 14, 2010, defendant Zep Solar Inc. filed a motion to stay litigation pending a patent reexamination in the patent infringement lawsuit brought against it by Akeena Solar Inc. The court granted Zep’s motion to stay, considering the early stage of the litigation, the potential for undue prejudice and the reduced burden of litigation on the parties.

The Court relied heavily on the fact that the reexamination will likely simplify the issues for trial, quoting PTO statistics that state that 51% of all inter partes reexamination proceedings result in all claims being canceled, and 92% of reexamination proceedings result in either canceled or amended claims.  Similarly, the Court put little weight on the fact that the delay would cause undue prejudice to the plaintiff. 

The Court noted plaintiff’s statistics that the average pendency for such reexaminations was between 34 and 53 months without appeal (between 60 and 97 months if decision appealed).  Without stating what the lessened potential delay might be, the Court only stated that “… according to a new report copyrighted in 2010, after the PTO created the Central Reexamination Unit in 2005, pendency times for inter partes reexaminations have decreased significantly.”

Plaintiffs should be prepared for the Motion and prepared for the lengthy process. 

SOURCE: Akeena Solar Inc. v Zep Solar Inc., No C 09-05040 (ND Calif. Apr. 14, 2010) (Order Granting Defendant’s Motion to Stay).