Denying Leave to File Motion to Stay IPR2014-00357


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.

Patent Owner argued that three related declaratory judgment actions were already stayed pending resolution of the ownership litigation, and that Petitioner did not oppose a stay of the declaratory judgment action that it had filed. Thus, Patent Owner argued that Petitioner should not object to a stay of this proceeding.  Petitioner opposed the stay on several grounds.

The Board denied Patent Owner’s request to file the Motion. In particular, the Board noted that the stay in the district court “was based, in part, on a concern that if defendants in that case—RPost Holdings, Inc., RPost Communications Limited, RPost International Limited, and RMail Limited—were found not to own the patents, they would lack standing to pursue their counterclaims, and there would be no case or controversy to support a declaratory judgment action against them.”  However, concerns regarding standing and case and controversy are not present in inter partes review proceedings.

The Board also found the advantages of the stay to be speculative. In particular, the trial date could be rescheduled, and the conclusion of the trial would not guarantee entry of a final judgment, leading to uncertainty that the ownership issue would be resolved.  Also, Patent Owner had “not disclaimed its right to appeal the final judgment in state court.”

Finally, the Board found that a stay “would significantly impact the Board’s ability to meet its statutory deadline, and a stay of this proceeding indefinitely pending final judgment and/or appeal would be entirely incompatible with [its] statutory deadline.”

Symantec Corporation v. RPost Communications Limited, IPR2014-00357
Paper 17:  Order on Conduct of the Proceeding
Dated: July 31, 2014

Patent: 8,468,199

Before: Thomas L. Giannetti, Beverly M. Bunting, and Matthew R. Clements Written by: Clements