Takeaway: Under 37 C.F.R. § 42.73(d)(3)(i), a patent applicant or owner may not take any action that is inconsistent with the Board’s adverse judgment, including obtaining in any patent a claim that is not patentably distinct from a finally refused or canceled claim.
In its Order, the Board denied Petitioner’s request for authorization to file a Motion to Stay Prosecution of pending U.S. Continuation Patent Application Serial Number 13/925,110. According to the Board, it would be premature at the present time to bar Patent Owner from seeking the allowability of claims that may end up being patentably distinct from the claims under analysis in the instant proceeding. Continue reading
Takeaway: The Board declined to authorize a motion to stay a proceeding while awaiting a Federal Circuit decision in a related CBM proceeding, because no compelling reason was provided.
In its Order, the Board denied Petitioner’s request to file a motion to stay the proceeding pending appeal to the Federal Circuit of the final decision in CBM2013-00014, which involves the same patent. The one-year period for rendering a final determination in this proceeding expires on March 25, 2015. Although the period can be extended by up to a six additional month for good cause, Petitioner recognized that a six-month extension may not be long enough for the Federal Circuit to render its decision.
The Board determined that this proceeding is in its final stages, with the last remaining substantive step, being the oral argument scheduled for October 28, 2014. Patent Owner had waived oral argument, so the Board determined that Petitioner could save cost by waiving oral argument. Thus, the Board found no compelling argument for a stay, because no significant time or cost would be saved.
Regions Fin. Corp. v. Retirement Capital Access Mgmt Co. LLC, CBM2014-00012
Paper 26: Order on Conduct of the Proceeding
Dated: September 22, 2014
Before: Glenn J. Perry, Thomas L. Giannetti, and Trenton A. Ward
Written by: Giannetti
Related Proceedings: CBM2013-00014
Takeaway: Because the Board employs a different standard for claim construction of an unexpired patent than the one employed in a district court, any alleged impropriety in the district court’s claim construction ruling is irrelevant to proceedings before the Board.
In its Order, the Board denied Patent Owner’s request to stay the Subject Proceedings. On September 15, 2014, Patent Owner filed a paper entitled Patent Owner Challenging Validity and Impartiality of Proceedings Due to Fraud Upon the Office and Request for Fraud Investigation by the Inspector General in the Subject Proceedings. Patent Owner alleged that in the accompanying district court case, the judges failed to disclose financial conflicts of interest, resulting in a tainted Markman Order that the Board relied upon in the Subject Proceedings. Therefore, Patent Owner requested that the Subject Proceedings be stayed pending resolution of the alleged financial conflicts of interest by the members of the district court. Continue reading
Takeaway: Requesting the stay of a reexamination proceeding prior to a decision to institute trial will likely be found to be premature.
In its Order, the Board denied Patent Owner’s request to file a motion to stay a co-pending reexamination proceeding. The ’049 Patent is the subject of Reexamination Control No. 95/001,850, which was filed December 12, 2011. The Reexamination found a substantial new question of patentability and rejected all claims subject to reexamination (claims 1, 2, 5, 6, 9, 11, 12, 15, 16, 19, 21-23, 25, and 26). Patent Owner filed a Notice of Appeal and an Appeal Brief on June 17, 2014. The Third Party Requester did not file a Respondent Brief, and the proceeding now awaits the Examiner’s Answer. Continue reading
Takeaway: The Board may deny a motion to stay if there is not significant overlap between the issues in the proceeding for which a stay is being sought and those in the other proceeding.
In its Decision, the Board denied Patent Owner’s Motion to Stay Reexamination Control No. 95/002,372 (“the Reexamination”) involving the subject ‘022 patent. Patent Owner had moved to stay the Reexamination, and Petitioner had opposed. Continue reading
Takeaway: Litigation regarding the proper ownership of a challenged patent will likely not support a party’s request to stay an inter partes review proceeding.
In its Order, the Board denied Patent Owner’s request for authorization to file a Motion to Stay. Patent Owner requested authorization to file the Motion to Stay pending the outcome of litigation regarding the ownership of the challenged patent. Continue reading
Takeaway: Patent Owner’s appeal to the Federal Circuit in a related inter partes review proceeding involving the same patent, by itself, does not justify granting a motion to stay in a given inter partes review proceeding or allow the Board to waive the one-year final written decision requirement.
In its Decision, the Board denied Patent Owner’s Motion to Stay the instant proceeding pending the outcome of Patent Owner’s appeal to the U.S. Court of Appeals for the Federal Circuit in related IPR2013-00082. According to the Board, Patent Owner had not met its burden of demonstrating that the instant proceeding should be stayed for at least a number of reasons. Continue reading
Takeaway: A request to stay a reexamination proceeding should not be made prior to the Board’s decision on whether to institute post-grant review.
In its Order, the Board denied Patent Owner’s Motion for Leave to File a Motion to Stay the Ex Parte Reexamination. The Board has not decided whether to institute an inter partes review. Therefore, it would be premature for the Board to decide whether to stay the ex parte reexamination because if the Board does not institute inter partes review, any motion to stay the ex parte reexamination would become moot. Continue reading
Takeaway: The Board is not statutorily authorized to take jurisdiction over pending patent applications that are related to the patent challenged in the proceeding.
In its Order, the Board summarized the initial conference call, which was held on May 22, 2014, and denied authorization for Petitioner to file a motion to stay prosecution of a co-pending patent application.
With respect to the motion to stay, citing EMC Corp. v. Personal Web Technologies, LLC., IPR2013-00083 (PTAB) (Paper 12), the Board stated that while the Board may stay a reexamination proceeding pursuant to 35 U.S.C. § 315(d) “where the involved patent is the subject of reexamination proceeding, there is nothing in the statute that extends that authority to allow the Board to take jurisdiction over related applications.” Thus, the Board did not authorize Petitioner to file a motion to stay prosecution of co-pending application 13/011,164. Continue reading