CAFC Denies Mandamus Relief to Overturn Stay Pending Ex Parte Reexam

The U.S. Court of Appeals for the Federal Circuit (CAFC) today denied a request for mandamus relief by Lambeth Magnetic Structures, LLC, who asked the CAFC to direct the  U.S. District Court for the Western District of Pennsylvania to vacate its order staying a patent infringement suit pending resolution of an ex parte reexamination (EPR) of the asserted patent claims.

Lambeth filed suit against Seagate for infringement if its U.S. Patent No. 7,128,988, titled “Magnetic material structures, devices and methods,” and a jury found the patent claims not invalid and not infringed. The CAFC, however, vacated and remanded that decision on appeal due to an erroneous claim construction.

On remand, Seagate requested an EPR by the U.S. Patent and Trademark Office (USPTO) and, following failed mediation efforts, moved to stay the litigation. The district court ultimately determined that a stay “could simplify the case and preserve resources, should the” EPR “modify or eliminate some or all” of the asserted claims and that a stay “could reduce or even eliminate the considerable resources necessary to retry the case” and therefore granted the motion.

The Federal Circuit noted in its order today that “[o]n mandamus, we will not disturb a stay determination absent a clear and indisputable right to relief.”  While the district court conceded that a stay could impact testimony due to the health and age of some of the witnesses, “[b]ecause the court found it was likely a stay would reduce the issues or even spare the parties, the public, and the courts the expense of a retrial and that a stay would not otherwise unduly prejudice Lambeth because it was not competing with Seagate, the court found that, on balance, a stay was warranted.” The CAFC said it was not prepared to disturb that determination on “limited mandamus review.”

The CAFC also addressed Lambeth’s argument that Seagate purposely delayed filing the EPR which was a “clear tactical advantage” that counseled against a stay, but the CAFC agreed with the district court’s conclusion that “given the Federal Circuit’s recent claim construction decision prompt[ed] Defendants to seek reexamination for the first time, the Court does not agree that the delay is improper or reflective of an attempt to manipulate the process to gain an unfair tactical advantage.”

Since Lambeth has not proven the kind of clear error that warrants mandamus relief, the petition for a writ of mandamus was denied.

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