Takeaway: A Motion to Stay an inter partes review proceeding may be denied as being premature if filed prior to institution of the proceeding or before the Board has decided a motion for joinder filed in the case.

In its Order, the Board addressed a number of issues, including Petitioner’s Motion for Joinder and Patent Owner’s request for authorization to file a Motion to Stay.

In addition to its Petition, Petitioner had filed a Motion for Joinder to join with IPR2014-00057. According to Petitioner, the Petition in the instant proceeding was “substantively identical” to the Petition in IPR2014-00057, except that it did not include a “the ground of unpatentability that was not authorized for institution.”  Moreover, except for claim 35, the same claims as challenged in the instant proceeding had been challenged in IPR2013-00082, “in which a final written decision was issued” and in which “Patent Owner filed a notice of appeal on May 20, 2014.”  Patent Owner challenged Petitioner’s contention that the Petition in the instant proceeding was substantially identical to the Petition in IPR2014-00057 (e.g., because Petitioner had failed to identify the real parties in interest as required by 35 U.S.C. § 312(a)(2)), and therefore requested authorization to file an Opposition to Petitioner’s Motion for Joinder.  Petitioner, in turn, requested leave to file a Reply to Patent Owner’s Opposition.  Thus, the Board authorized Patent Owner to file an Opposition to Petitioner’s Motion for Joinder by a specified date.

Patent Owner, for its part, requested authorization to file a Motion to Stay the instant proceeding “pending the termination of the appeal from the final written decision entered in IPR2013-00082.” According to Patent Owner, the parties would be burdened and the Board’s resources would not be efficiently utilized if the instant proceeding and the appeal in IPR2013-00082 were conducted concurrently.  Petitioner, in response, asserted that because appeal to the U.S. Court of Appeals for the Federal Circuit usually takes about 10.5 months, staying the instant proceeding would cause substantial delay and prejudice Petitioner.  The Board denied Patent Owner’s request for leave to file a motion to stay because it was premature, e.g., because the Board had not yet decided whether to institute inter partes review in the present case or whether to grant Petitioner’s Motion for Joinder.

Unified Patents, Inc. v. Personal Web Technologies, LLC and Level 3 Communications, IPR2014-00702 
Paper 7: Order on Conduct of the Proceedings 
Dated: May 27, 2014 
Patent 5,978,791 
Before: Kevin F. Turner and Joni Y. Chang 
Written by: Chang
Related Proceedings: IPR2013-00083; IPR2014-00057