District of Maine Stays Patent Case Pending Appeal of Reexam Result

In a case closer to home, U.S. District Judge Jon Levy has granted a motion filed by Microsoft to stay a patent infringement lawsuit filed against it by SurfCast, Inc., in which SurfCast has accused Microsoft’s Windows 8 tiles of patent infringement. (Full disclosure: we are co–counsel for Microsoft in the case.) As many patent disputes now do, this matter was proceeding on parallel tracks—through federal litigation filed by SurfCast in Maine and inter partes review filed by Microsoft with the Patent Trial and Appeal Board. At an earlier stage of the litigation, the Court had denied SurfCast’s motion to stay the federal court action pending a written opinion of the PTAB in the inter partes review proceeding. The federal case had moved forward, with dispositive motions pending, when the PTAB issued its final written opinion, an opinion favorable to Microsoft. Microsoft immediately filed a motion to stay the district court action pending the final resolution of the PTAB proceeding through an appeal (or the exhaustion of SurfCast’s appellate rights). In ruling on that motion, Judge Levy concluded that, despite the pending dispositive motions, the timing of the stay was a neutral factor, the potential for simplification of the issues weighed in favor of a stay, and SurfCast would not suffer prejudice nor Microsoft gain a tactical advantage from a stay.