Takeaway: Petitioners that wish to stay a co-pending reexamination proceeding should request the stay as early as possible. However, even a timely requested stay may not be warranted if prosecution has ended in the reexam.

In its Order, the Board denied Petitioner’s request for authorization to file a Motion to Stay a reexamination proceeding concerning the challenged ‘132 patent. In particular, the Board held that the requested stay of the reexam would not avoid potential inconsistency with the instant IPR proceeding and was not timely. Continue reading →

Takeaway: Requesting authorization to file a motion to stay co-pending reexamination proceedings based on a CBM petition will likely be deemed premature by the Board if the CBM review had not yet been instituted.

In its Order, the Board denied Petitioner’s request for authorization to file a motion to stay the co-pending inter partes reexamination involving the same patent challenged in the proceeding, U.S. Patent No. 7,024,387 (“the ‘387 patent”). The Board held that any request to stay the co-pending reexamination based on the CBM proceeding was premature at such an early stage of the CBM proceeding. The Board had not yet even determined whether to institute the CBM review. The Board stated that Petitioner may renew its request for authorization to file a motion to stay the reexamination if a CBM review of the ‘387 patent is eventually instituted. Continue reading →

Takeaway: The Board is not likely to stay other PTAB proceedings challenging the same patent to have all proceedings on the same schedule, particularly when the proceedings raise different unpatentability grounds and not every proceeding has been instituted.

In its Order, the Board denied the parties’ joint motion to stay the CBM proceeding. After filing the petitions in the CBM review proceedings, Petitioners filed petitions for inter partes review of the same three challenged patents (IPR2014-00097, IPR2014-00098, and IPR2014-00099). The parties requested a stay in the CBM proceedings until a determination is made whether to institute a trial in the IPR proceedings, stating that it would be more efficient to have all six proceedings on the same schedule allowing for single depositions and a single trial if the IPR proceedings are instituted. The Board denied the request stating that the CBM proceedings only involve patent eligibility under 35 U.S.C. § 101 while the IPR proceedings involve patentability over certain prior art under 35 U.S.C. §§ 102 and 103. Further, the Board has not yet determined whether it will institute the IPR reviews and if it does not, then it would be a waste of time to stay the CBM proceedings. Finally, the proposed schedule by the parties did not allow for the Board to issue its final written decision within one year of institution of the CBM proceeding. Therefore, the Board did not see a compelling need to stay the CBM proceedings at this time. Continue reading →