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To Stay or Not to Stay: That Is the Re-examination Question

By Jason F. Hoffman

The NTP v. RIM case is the latest example of a conundrum facing defendants: how to strategize the confluence of a district court litigation and a Patent Office re-examination proceeding. A district court litigation and a patent office re-examination proceeding both provide methods for challenging the validity of a patent.

After a jury found that RIM infringed NTP's patents, RIM filed its first of four motions to stay the case pending the outcome of the Patent Office's re-examination of the NTP Patents. The court rejected RIM's multiple requests. With appeals exhausted and a possible injunction pending, RIM settled with NTP for a reported $612.5 million, even though it appears that NTP patents will not survive the Patent Office's re-examination process.

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