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.

PTAB Continues to Add Gloss to Inter Partes Review Trial Practice Rules

iStock_000008674333XSmallWelcome to our third and final report on one of the more comprehensive orders issued to date by the PTAB in an Inter Partes Review proceeding, the PTAB’s “Conduct of the Proceedings” Order from Inter Partes Review No. IPR2012-00022 (Ariosa Diagnostics v. Isis Innovation, Ltd.).  This post focuses on three quick-hitting topics touched upon by the Board in the Ariosa IPR that helps add clarity regarding how these proceedings will be handled.  Earlier posts relating to this order can be found HERE and HERE.

First, the PTAB made note of the fact that the parties advised the Board that they were discussing the entry of a protective order.  As advice that can be used as an IPR practice tip, the Board requested that, to the extent the proposed order deviated from the Board’s default protective order, the parties should identify the differences between the proposed protective order and default protective order.

Second, the PTAB asked Isis, the patent owner, for a date by which it thought it would file any Patent Owner Preliminary Response.  Ariosa took the opportunity to suggest that, given that many of the issues in this Inter Partes Review were similar to those addressed in the co-pending district court litigation between the same parties, that Isis should be given a shortened time frame to file the Preliminary Response.  Isis responded by suggesting that the impending holidays, as well as the fact that counsel for the IPR was different than counsel for the litigation, would make it difficult to file the Preliminary Response sooner than the 3 month window allowed by the Trial Practice Rules.  37 CFR § 42.107.  The Board did not shorten the three month timeframe for filing the Preliminary Response.  It is, however, telling that it considered such an action – suggesting that such requests to shorten the timeframe for filing a Patent Owner Preliminary Response may, under the right circumstances, be granted.

Third, and lastly, Isis requested clarification of the page limit for the Preliminary Response regarding whether such response is limited to the number of pages included in the petition, or whether it was entitled to the full 60 pages allowed by the Trial Practice Rules.  37 CFR §42.24.  The Board made clear that the patent owner is entitled to the full 60 pages provided in the rules, even if the petitioner did not use the full 60 pages in its petition.

Slowly, but surely, clarity is being brought to Inter Partes Review proceedings and the Trial Practice Rules that govern them.