Denial of Leave to File a Motion to Stay Prosecution of Co-Pending Application IPR2014-00115


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.

The Board reminded the parties that they may stipulate to changes in Due Dates 1-5 of the Scheduling Order. The Board also noted that any motions to seal must be accompanied by a protective order as an exhibit and that the Board prefers that the parties use the default protective order in the Office Trial Practice Guide.  Any deviations from the default protective order should be indicated in “redline.”  The Board also reminded the parties to submit the full transcript of any deposition testimony as an exhibit to their papers.

The parties had also filed Motions Lists in advance of the initial conference call. The Board noted that any motions that are automatically authorized by the rules, such as motions to amend, need not be included in the motions list.

Patent Owner requested authorization to file a motion to permit video recording of deposition testimony. The Board authorized the motion over Petitioner’s objection, noting that Patent Owner was only preserving an opportunity for the panel to review the video.  However, authorization would be required before the video-taped deposition could be filed with the Board.

With respect to Petitioner’s Motions List, the Board noted that the List was actually the substance of the motions rather than just a list. Accordingly, the Motions List filed by Petitioner was expunged.  Among the listed motions by Petitioner was a request for additional discovery requesting a slideshow that was shown to the Examiner during prosecution.  Patent Owner indicated that it may file the slideshow with its Patent Owner Response, and that if the client agreed, would supply Petitioner with a copy of the slideshow within two weeks of the call.

Apotex Inc. v. Wyeth LLC, IPR2014-00115
Paper 19: Order on Conduct of the Proceeding
Dated: May 29, 2014
Patent: 7,879,828 B2
Before: Lora M. Green, Francisco C. Prats, and Jo-Anne M. Kokoski
Written by: Green Related Proceeding: