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.