Board Denies Motion to Stay IPR Despite 3 Other Co-Pending Challenges

18363437_sBuried under the weight of four different challenges to its patent, Patent Owner sought relief via a motion to stay one of the pending IPR proceedings. But, in Rackspace US, Inc. and Rackspace Hosting, Inc. v. PersonalWeb Technologies, LLC & Level 3 Communications, IPR2014-00057, involving US Patent No. 5,978,791, the Board declined to exercise its authority (under 35 U.S.C. § 315(d)) to manage multiple proceedings at the PTO involving the same patent and denied Patent Owner’s Motion to Stay.

The ‘791 patent was involved in four separate proceedings at the Patent Office (the instant IPR, IPR2013-00082, a reexamination, and IPR2014-00702).  All four proceedings relied on the same prior art. Several claims of the ‘791 patent were found to be unpatentable in the ‘082 proceeding, that was appealed the final decision to the CAFC.  Additionally, the same claim constructions were adopting in both proceedings.

However, the Board felt constrained in view of the requirement the proceeding be completed within one year, unless good cause was shown. Here, good cause was not sown because there were a few key differences between the instant proceeding and the ‘082 proceeding, including: (1) The ‘791 claim challenged in the instant proceeding was not challenged in the ‘082 proceeding; (2) Patent Owner acknowledged (and the Board agreed) that new witnesses and testimony were present in the instant proceeding; and (3) The instant proceeding relied on different disclosures of the prior art reference which was in common with the ‘082 proceeding.

Based on these factors, the Board found that granting the motion to stay would interfere with its statutory mandate to seek a just, speedy, and inexpensive resolution to the proceeding.

PTAB Refuses to Stay Inter Partes Review in View of Settlement Talks

The Patent Trial and Appeal Board spoke in unambiguous terms recently in deciding that it could not stay inter partes review proceedings, even if both parties agree, in view of the congressional mandate imposed upon the Board to complete IPR trials in a timely manner.  Anova Food, LLC v. Leo Sandau, et al. (IPR2013-00114).

The parties in Anova had informed the Board that settlement negotiations were ongoing and that, to ensure the parties’ full attention could be focused on those settlement discussions, the parties requested a 2-month stay of the IPR.  The Board, however, clearly felt hamstrung by the time constraints imposed upon it by the America Invents Act stating, in rather unambiguous terms, that “there is a congressional mandate to timely complete inter partes review proceedings, and thus it could not stay the proceeding.” 35 USC §316(a)(11).

In line with the flexible nature the Board has adopted with inter partes review proceedings, however, it worked with the parties to fashion what appears to be an acceptable compromise.  That is, to provide the parties with breathing room, the patent owner was provided an additional two months to file its patent owner preliminary response – giving it a total of five months to file versus the default of three months.  To make up for that two month extension, each party agreed to shorten its response time for future IPR filings – the patent owner agreeing to file its response to the petition, if it were ultimately granted, within two months versus the standard three-month deadline; the patent challenger agreeing to file its reply regarding the petition within two months, as well, versus the standard three-month deadline.

In the end, it seems the Board will be unrelenting regarding the congressional directive to timely complete inter partes review proceedings.  It remains to be seen whether this holding was based solely on the facts of this case, or if other factual scenarios might convince the Board to stay an IPR proceeding under different circumstances.