In its Order, the Board denied Patent Owner’s request to file a motion to stay ex parte reexamination control no. 90/012,784 involving the ’689 patent. The request had been made for the first time by Patent Owner’s counsel during a teleconference requested by the Patent Owner to discuss “scheduling.”
The Board began by noting that requests for relief should be filed as motions in accordance with 37 C.F.R. § 42.20(a), and that under 37 C.F.R. § 42.20(b), such motions typically must be authorized by the Board prior to their filing. The Board also reminded the parties that email requests for teleconferences with the Board should describe the topic(s) for discussion with sufficient detail to allow the Board and the other party to understand and prepare for the issue(s) to be raised on the call; and that the parties should confer on any issue(s) either party would like to discuss on the teleconference with the Board. The Board ended up treating Patent Owner’s teleconference request as a request for authorization to file a motion to stay the reexamination.
Addressing the substance of Patent Owner’s request, the Board, citing 35 U.S.C. § 315(d), stated that it will not ordinarily stay a reexamination in the absence of good cause. This is because reexaminations are to be conducted with special dispatch. 35 U.S.C § 305. The Board went on to note that the reexamination in question has not been appealed to the Board. Then, considering the preliminary stage of this inter partes review proceeding (in which a decision whether or not to institute has not yet been decided) and the advanced stage of the reexamination (now on appeal at the Board), the Board denied Patent Owner’s request for authorization to file a motion to stay the ex parte reexamination. The Board concluded by indicating that Patent Owner may renew its request for authorization to file a motion to stay if the instant inter partes review is instituted.
Nissan North America, Inc. v. Norman IP Holdings, LLC, IPR2014-00563
Paper 20: Order Denying Authorization for Motion to Stay
Date: September 12, 2014
Patent 5,502,689
Before: Bryan F. Moore, Hyun J. Jung, and Frances L. Ippolito
Written by: Moore