Law360 - "Kyocera Denied Stay In DTL Cell Phone Patent Suit"

A victory for GPC's client company DTL was the subject of a recent Law360 article, "Kyocera Denied Stay In DTL Cell Phone Patent Suit" (Law360, February 10, 2011 - subscription required).

Article excerpt:

Third-party defendant Kyocera Communications Inc. has failed to stay Digital Technology Licensing LLC’s infringement suit against Sprint Nextel Corp. pending the reexamination of DTL’s widely-asserted cell phone patent.

Judge Stanley Chesler of the U.S. District Court for the District of New Jersey on Monday affirmed the magistrate judge’s decision to let the litigation continue at the same time as reexamination proceedings at the U.S. Patent and Trademark Office.

At a hearing last Friday, the court found little reason to postpone the long-running case for a reexamination that could take years to complete, noting that Kyocera, Sprint’s supplier, is a third-party defendant that arrived late to the action.

“I cannot and will not permit this case to be put into indefinite abeyance and, as far as I'm concerned, not only did [the magistrate judge] not abuse his discretion, not only did he make a decision which was not contrary to law, but, indeed, he made the absolute correct decision and one,” Judge Chesler said.

The patent at issue is U.S. Patent Number 5,051,799, titled “Digital output transducer,” which covers technology to convert analog signals into digital information.

The magistrate judge refused Kyocera’s stay application in October. Kyocera contended in its appeal of the ruling that continuing litigation over the patent would be wasteful because the PTO was well on the way to rejecting the now-expired patent and DTL was not a market competitor.

On reexamination the PTO initially found that the asserted claim 20 of the‘799 patent was invalidated by eight prior art references, according to Kyocera‘s appeal.

However, Judge Chesler said that unlike Kyocera’s request, past stays in the case facilitated settlements, rather than perpetuation of the dispute.

Stephen Roth, counsel for DTL, applauded the court’s support for the magistrate’s decision to let litigation continue.

“We’re happy with Judge Chesler's ruling, both on the substance and the affirmance of the magistrate’s correct decision,” Roth said. “Kyocera was a late interloper to the case and the delay would prejudice DTL.”

Roth said he was confident that DTL would prevail upon reexamination of the ‘799 patent, which the plaintiff has asserted against a slew of cell phone companies, settling with AT&T Inc., Verizon Communications and Motorola Inc., among others.

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