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December 20, 2012
15:17 EDTCALLmagicJack says court grants stay in patent case
magicJack VocalTec announced that in a patent infringement action brought against it by another company over U.S. Patent No. 8,243,722, the court granted a stay of the litigation in light of a pending re-examination proceeding in the U.S. Patent & Trademark Office seeking cancellation of that patent. The re-examination petition was filed prior to the filing of a lawsuit, and on November 14, the USPTO granted the petition on grounds including that recently submitted prior art references call into question the validity of the '722 patent. As set forth in magicJack's papers filed in support of its motion to stay the litigation, the USPTO found all thirteen of the grounds of invalidity asserted in the petition raise substantial new questions concerning the patentability of the '722 patent. Among the prior art references cited in the petition are two published patent applications assigned to YMax Communications Corp., an affiliate of the magicJack defendants named in the litigation, both of which predate the '722 patent by at least two and a half years. According to the court's order, the case is stayed until June 14, 2013, at which time the parties are to provide the court with a status report on the re-examination, and at which time magicJack may file a motion to continue the stay if needed. magicJack believes the re-examination process in the USPTO is a critical and necessary first step when companies don't properly disclose prior art and has previously used the process with great success against other supposed patents, the company said.
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