Battle-Of-The-Stays – Chalk Up Another Victory to the Petitioners

by | Feb 8, 2017 | Stay

Black and white tunnel for PTAB Battle-Of-The-Stays post

By Matt Johnson

The multiple flavors of review and prosecution at the Patent Office produce an environment where a patent family could be subject to inconsistent results. Conceivably, patents in a pre-AIA patent family could simultaneously be subject to regular examination, reexamination, reissue, interference, and one or more PTAB post-issue trial at the same time. With these various reviews being provided by disparate arms of the Patent Office, inconsistent judgments are a legitimate concern.

35 U.S.C. § 315(d) and corresponding Rule 42.122(a) provide the PTAB with the power to dictate how such multiple proceedings should proceed.  Specifically, 35 U.S.C. § 315(d), provides:

(d) MULTIPLE PROCEEDINGS.— Notwithstanding sections 135(a), 251, and 252, and chapter 30, during the pendency of an inter partes review, if another proceeding or matter involving the patent is before the Office, the Director may determine the manner in which the inter partes review or other proceeding or matter may proceed, including providing for stay, transfer, consolidation, or termination of any such matter or proceeding.

Further, pursuant to 37 C.F.R. § 42.122(a):

(a) Multiple Proceedings. Where another matter involving the patent is before the Office, the Board may during the pendency of the inter partes review enter any appropriate order regarding the additional matter including providing for the stay, transfer, consolidation, or termination of any such matter.

It is common for parties to request that the PTAB use its docket management authority to stay one or more proceedings.  Patent Owners and Petitioners typically request stays of different proceedings for different reasons.  Patent Owners often look to stay post-issue trials (i.e., IPRs, CBMs, PGRs) to prolong the life of claims under attack (e.g., for district court trial reasons).  Petitioners tend to seek stays of non-PTAB matters (e.g., examination, rexamination, reissue) until the PTAB has decided the fate of challenged claims so that the petitioner will not need to re-litigate claims at the Board that are similar to those that they might prevail against in the existing PTAB trial.

Petitioners have fared much better than patent owners in this battle-of-the-stays.  Patent Owners have very little, if any, chance of achieving a PTAB trial stay, based largely on the Board’s pride in completing all trials within their statutorily mandated time frames, e.g., 35 U.S.C. §§ 314(b); 316(a)(11); see TradeStation Group v. Trading Technologies, CBM2015-0016, Paper 40 (PTAB, Mar. 24, 2016); Mercedes-Benz USA v. Velocity Patent, IPR2015-00290, Paper 9 (PTAB, Jan. 21, 2015); Rackspace v. Personal Web Technologies, IPR2014-00057, Paper 23 (PTAB, Jan. 23, 2014).  In contrast, petitioners have had significantly more luck.  Hulu v. IMTX Strategic, CBM2015-00147, Paper 18 (PTAB, Jan. 17, 2016); American Simmental v. Leachman Cattle, PGR2015-00005, Paper 18 (PTAB, June 25, 2015).

Legend3D v. Prime Focus, IPR2016-00806 provides yet another example of petitioner success on achieving a stay.  There, the Board held a teleconference to discuss the timing of a reissue application associated with the patent of interest in the PTAB matter.  The petitioner argued that a stay of the reissue application was appropriate because the reissue application pursued claims “nearly the same” as those pending before the Board.  The patent owner complained that the proposed stay would delay the likely resolution of the reissue application for two additional years.  The PTAB panel sided with the petitioner, citing the possibility of inconsistent judgments and unnecessary duplication of efforts across the two proceedings.

Takeaway

The PTAB’s docket navigation tools provided by 35 U.S.C. § 315(d) and Rule 42.122(a) provide petitioners a tool for dealing with complex patent families that are undergoing active prosecution at the patent office.  An accusation of infringement of a patent in such a family is often a scary proposition.  But the ability to petition the Board to rein in copending reviews in other branches of the Patent Office provides petitioners an opportunity to pause the issuance of concerning claims until the PTAB has a chance to voice its opinion — a chance at a much needed reprieve for an accused infringer under siege.

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Matthew Johnson

Partner at Jones Day
Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Currently co-chairing the Firm's PTAB subpractice and involved in proceedings at the Board since the first day of their availability in September 2012, Matt regularly represents clients as both petitioners and patent owners at the Board. He further works as an advocate for clients in appeals from Board proceedings at the Federal Circuit.