Should A Patent Infringement Action Be Stayed Pending Resolution of an Interference Involving the Patent Asserted in the Infringement Action?¹

By Charles L. Gholz²

Introduction

There are now a great many opinions dealing with the subject of when a patent infringement action should be stayed pending resolution of a reexamination (ex parte or inter partes) involving the patent asserted in the infringement action.³ There are (surprisingly, I think) many fewer opinions dealing with the subject of when a patent infringement action should be stayed pending resolution of an interference involving the patent asserted in the infringement action.⁴

In this article I will summarize (and criticize) a number of opinions involving the latter issue in the context of a patent infringement action or a patent-patent interference between two companies that are the real parties in interest in the interference (i.e., the owners of the two cases in interference). ⁵ After that, I will suggest various lessons to be learned from those opinions.

Research Corp. v. Radio Corp. of America

Research Corp. v. Radio Corp. of America, 181 F. Supp. 709, 124 USPQ 401 (D. Del. 1960)(Wright, Ch. J.), is an early opinion granting a motion to stay, and it was authored by a judge who was extremely well regarded by th...