AGIS Software Defendants Skirt NKH-Fintiv Rule, Win Stay, as Plaintiff Sues Three More

February 13, 2021

Last week, District Judge Rodney Gilstrap stayed a set of Eastern District of Texas cases filed in November 2019 by AGIS Software Development LLC against Alphabet (Google, Waze Mobile) and Samsung. The court did so even though the stay “comes late in the progression of this case—with discovery complete, pretrial briefing submitted, and jury selection pending”. Judge Gilstrap ruled that because all the asserted claims of the six patents-in-suit, generally related to mobile messaging, are now subject to granted ex parte reexaminations, the prejudice to the plaintiff inherent in any delay, the maturity of the litigation notwithstanding, “is outweighed by the benefit of such parallel review”. Notably, Google and Samsung filed the requests for ex parte reexam of the last two patents only after the Patent Trial and Appeal Board (PTAB) exercised discretion under “the NHK-Fintiv rule” to deny institution of inter partes review (IPR)—based on petitions asserting the exact same grounds.

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