Takeaway: The Board may not authorize a motion to stay a proceeding where a filing necessitating the stay, such as a writ of mandamus to the Federal Circuit, has not yet been filed and where modifying due dates in the scheduling order could alleviate any prejudice to the moving party.
In its Decision, the Board denied Patent Owner’s second request to file a motion to stay the proceeding “pending a decision of the U.S. Court of Appeals for the Federal Circuit on a second petition for a writ of mandamus, in view of [the Board’s] denial of Patent Owner’s first request for a motion to stay.” In particular, the Board found Patent Owner’s request to be premature and that there was insufficient cause to deviate from the normal course. Continue reading
Takeaway: If a petitioner requests authorization for leave to file a motion to stay a pending ex parte reissue proceeding before the inter partes review is instituted, the Board will likely deny the request as premature.
In its Order, the Board determined that a stay of ex parte reissue proceedings was not warranted at this time. The patent-at-issue in the inter partes review proceedings is also currently the subject of three ex parte reissue proceedings. Petitioner sought authorization to file a motion to stay the ex parte reissue proceedings, and Patent Owner opposed.
Takeaway: The Board will likely grant a motion to stay a co-pending reexamination where a motion to consolidate the reexamination is currently being considered by the Board.
In its Order, the Board granted Petitioner’s motion to stay the co-pending ex parte reexamination control no. 90/013,385 (“the ’385 reexamination”) of the ’601 patent “pending the panel’s consideration of Ford’s prior request for authorization to move to consolidate the ’385 reexamination with one of IPR2015-00860 or IPR2015-00861.”
Patent Owner objected to the requested stay, arguing that the ’385 reexamination was “at a final stage, and the Examiner in charge of the reexamination proceeding likely soon will issue a Reexamination Certificate.” A stay, Patent Owner argued, would likely “interfere with the issuance of the Certificate.”
35 U.S.C. § 315(d) and Rule 42.122(a) provide the Board with the authority to stay a reexamination proceeding. In considering Patent Owner’s arguments against the stay, the Board indicated that the argument actually weighs in favor of granting the stay. In this regard, the ’385 reexamination forms the basis of Petitioner’s requested consolidation. The Board’s “consideration of whether to consolidate the ’385 reexamination with one of the involved inter partes review proceedings may be rendered moot should a Reexamination Certificate issue in the ’385 reexamination.”
Accordingly, the Board found it prudent to temporarily stay the ’385 reexamination to provide the Board with time to consider whether the ’385 reexamination should be consolidated with one of the two inter partes review proceedings. All time periods for filing papers in the ’385 reexamination were tolled while the stay remains in place.
Ford Motor Company v. Signal IP, Inc., IPR2015-00860, 00861
Paper 11: Order Staying Ex Parte Re-examination Control No. 90/013,385
Dated: October 1, 2015
Patent: 6,775,601 B2
Before: Josiah C. Cocks, Mitchell G. Weatherly, and Charles J. Boudreau
Written by: Cocks
Related Proceedings: Re-examination Control No. 90/013,385
Takeaway: The Board may stay a reissue application that is concurrently pending with a post-grant review of a related patent where efforts within the Office would be duplicated and could potentially result in inconsistencies between the proceedings.
In its Decision, the Board sua sponte stayed a reissue of the ’557 patent pending outcome of the instituted post grant review. Patent Owner had filed previously a reissue application of the ’557 patent, but no Office Action had yet issued. In a related reissue application, however, a non-final action was issued rejecting pending claims “over some of the same grounds and references which are the subject of this post-grant review.” Continue reading
Takeaway: The Board does not have the authority under 35 U.S.C. § 315(d) to stay the prosecution of related pending patent applications.
In its Order, the Board denied Petitioner’s request for authorization to file a motion to stay the prosecution of related, pending U.S. Patent Application Nos. 13/660,706 and 14/307,122. It had been Petitioner’s position that at least one of the claims of these pending patent applications was patentably indistinct from at least one of the claims of the ’268 patent challenged in the instant proceeding. Thus, according to Petitioner, “if certain claims in the ’268 patent are found unpatentable in this proceeding, Patent Owner should be estopped from obtaining claims in the related patent applications that are patentably indistinct from those claims under 37 C.F.R. § 42.73(d)(3)(i).” Continue reading
Takeaway: A different claim construction standard is applicable in the district court in determining infringement than the broadest reasonable interpretation standard applied by the Board in determining patentability.
In its Order, the Board refrained from authorizing Patent Owner to file a motion to compel routine discovery. The Board also indicated that Patent Owner was not authorized to file a motion to stay any of the referenced proceedings, or a motion to change or extend the due dates in the existing Scheduling Orders. Continue reading
Takeaway: A stay for an indefinite time period which is entered during a preliminary proceeding may significantly impact the applicable statutory pendency goals.
In its Order, the Board denied Petitioner’s request for authorization to file a motion for stay of the proceeding. According to the Board, the reasons put forth by Petitioner for granting a stay did not sufficiently support Petitioner’s authorization request. Continue reading
Takeaway: No new testimony evidence is permitted in a preliminary response, but the Board will not consider a motion to strike on the issue because it will decide what is impermissible new testimony evidence in its decision on institution without such a motion.
In its Order, the Board denied authorization to Petitioner to file a motion to strike Patent Owner’s Preliminary Response and denied authorization to Petitioner to file a motion to stay a related ex parte reexamination. Petitioner requested leave to file a motion to strike Patent Owner’s Preliminary Response for including new testimony evidence that is prohibited by 37 C.F.R. § 42.107(c). However, the Board denied leave to file the motion, because the Board would address the issue of adding new testimony evidence in its decision regarding institution. Also, the Board denied leave to file a motion to stay a related reexamination, because such a motion is premature until a decision on institution is rendered in this case.
Takeaway: In determining whether to waive the three-month time limit for filing Patent Owner’s preliminary response, the Board will consider the impact of the resultant delay on the goal of completing proceedings in a manner that is just, speedy, and inexpensive.
In its Order, the Board denied Patent Owner’s request for authorization to file a motion for a stay of the deadline to file a Preliminary Response. Patent Owner’s bases for requesting such authorization related both to another proceeding (CBM2014-00008) involving the same ’807 patent and the same parties, and recent Supreme Court opinions in the cases of Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014) and Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014). Continue reading