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.

Mastercard International Incorporated v. John D’Agostino, IPR2014-00543
Paper 6: Order on Conduct of the Proceeding
Dated: June 3, 2014
Patent 8,036,988
Before: Sally C. Medley, Karl D. Easthom, and Kalyan K. Deshpande
Written by: Medley