The following cases address requests by the parties to stay instituted IPR or CBM proceedings, or to stay other proceedings involving the challenged patent.
Tradestation Group, Inc. v. Trading Techs. Int’l, Inc., CBM2015-00161, Paper 38 (Mar. 10, 2016). The Board denied patent owner’s request to file a motion to stay the proceeding beyond the one-year period for the Board to issue a final written decision pursuant to 37 C.F.R. § 43.300(c). Patent owner requested the stay until the Federal Circuit decides an appeal of a district court decision finding that the claims of the challenged patent recite patent-eligible subject matter under 35 U.S.C. § 101. While noting that 37 C.F.R. § 43.300(c) permits the Board to extend the period for issuing a final written decision for an additional six months for good cause, the Board indicated that patent owner did not demonstrate that there was good cause to extend the period for issuing the final written decision. The Board indicated that the trial portion of the proceeding would have to be compressed into a six-month period because patent owner had not yet filed a patent owner response.
Nestle USA, Inc. v. Steuben Foods, Inc., IPR2015-00195, Paper 96 (PTAB Mar. 21, 2016). The Board denied patent owner’s motion to stay a co-pending ex parte reexamination of the challenged patent. The reexamination was previously stayed during the co-pendency of a previous IPR that was terminated. Patent owner requested to stay the reexamination again, asserting that the grounds on which the Board instituted in the present IPR are substantially identical to those on which the Examiner has rejected the claims in the reexamination. The Board denied the stay because, while patent owner points to the potential for inconsistency, no actual conflict between the reexamination and the IPR proceeding exists. The final written decision will be issued in approximately two months. Thus, should any actual conflict occur between the two proceedings, it can be resolved when the reexamination is appealed to the Board. A stay is also not appropriate because the reexamination addresses additional claims and prior art that are not at issue in the IPR proceeding.
Bio-Rad Labs, Inc. v. GE Healthcare Bio-Sciences AB, IPR2015-01826, Paper 18 (PTAB Apr. 8, 2016). The Board stayed the reissue of the patent involved in the IPR proceeding pursuant to 37 C.F.R. §§ 42.3 and 42.122. Ordinarily, the Board will not stay a reissue application in the absence of good cause because reissue applications are given special status. In this case, however, conducting the examination of the reissue application concurrently with the IPR proceeding would duplicate efforts within the Office and could potentially result in inconsistencies between the proceedings. The claims pending in the reissue application include the claims for which the Board instituted trial in the IPR proceeding. The reissue application has not been examined, and no Office actions have been entered. Patent owner, however, seeks to amend claim 3 in the reissue application. Should examination of the reissue application begin, the Office may allow claim 3, as amended, thereby changing the scope of the claim while the Board is conducting its review in the IPR proceeding.
Apple Inc. v. E-Watch, Inc., IPR2015-00412, Paper 11 (PTAB Apr. 15, 2016). The Board denied patent owner authorization to file a motion to extend the pendency of the proceedings 6-7 weeks beyond the current statutory due date of the final written decision, to await a decision by the Supreme Court in Cuozzo. The situation is not unique to patent owner, who still has other potential recourse to have the case remanded back to the Board from the Federal Circuit, if petitioner prevails and patent owner appeals the final written decision, in light of any decision by the Supreme Court that the rule of broadest reasonable interpretation (BRI) should not be applied. The Board noted that patent owner had not articulated any difference in the reading of the claims onto the prior art even if BRI were not applied. A motion directed to the Chief Administrative Patent Judge to extend the one-year period to complete the trial is not meaningful unless the panel is persuaded to grant a stay of proceeding beyond that period.
Geosys-Intl, Inc. v. Farmer’s Edge Precision Consulting, Inc., IPR2015-00709, Paper 30 (PTAB Apr. 19, 2016). The Board granted petitioner’s unopposed motion to stay the reissue application of the challenged patent. The claims of the patent are subject to a patentability determination in two separate proceedings before the Office. That scenario merits staying the examination of the reissue application. Such a stay is practical as it would conserve Office resources by reducing the possibility of duplicative, or unnecessary, efforts, and would also lessen the potential for inconsistent results.
Volkswagen Grp. of Am., Inc. v. Joao Control & Monitoring Sys., LLC, IPR2015-01508, Paper 24 (PTAB June 6, 2016). The Board sua sponte ordered, under 35 U.S.C. § 315(d), and 37 C.F.R. §§ 42.3(a) and 42.122(a), an ex parte reeaxamination to be stayed pending the outcome of the IPR proceeding. The Board noted that claim 3 of the patent is challenged in two IPRs and a reexamination proceeding, and these challenges overlap as to the claim construction arguments advanced and the prior art asserted. The Boaard indicated that staying the reexamination was appropriate because claim 3 is subject to a patentability determination in multiple proceedings before the Office, and because a stay would conserve Office resources and would lessen the potential for inconsistent results.