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.

Int’l Securities Exchange LLC v. Chicago Board Options Exchange, Inc., CBM2013-00049, CBM2013-00050, and CBM2013-00051
Paper 21: Order on Conduct of the Proceedings
Dated: March 28, 2014
Patents 7,356,498 B1, 7,980,457 B2, 8,266,044 B2
Before: Justin T. Arbes, Rama G. Elluru, and James B. Arpin
Written by: Arbes