Takeaway: A stay for an indefinite time period which is entered during a preliminary proceeding may significantly impact the applicable statutory pendency goals.

In its Order, the Board denied Petitioner’s request for authorization to file a motion for stay of the proceeding. According to the Board, the reasons put forth by Petitioner for granting a stay did not sufficiently support Petitioner’s authorization request.

Petitioner’s request for authorization to file a motion for stay occurred before trial had been instituted in this case. Moreover, Patent Owner’s Preliminary Response was not due until March 9, 2015.  Nonetheless, Petitioner had requested the stay in view of co-pending Reexamination 90/013,252 directed to the ’781 patent.

Petitioner had noted “that it does not know what new or amended claims, if any, eventually will emerge from reexamination of the involved patent.” Moreover, Petitioner explained “that because it already has been sued by Patent Owner, by the time a reexamination certificate issues, perhaps with new or amended claims, Patent Owner will likely argue that institution of another inter partes review on the same patent is precluded by the ‘1 year’ time bar of 35 U.S.C. § 315(b).”  Thus, according to Petitioner, the requested stay would avoid the need for Petitioner to file a new petition directed to new or amended claims after issuance of any reexamination certificate.

In providing its analysis, the Board noted that although a preliminary response had yet to be filed and no trial had been instituted, the requested stay would nevertheless delay any institution of trial as well as the date of final determination in any trial. Thus, the Board concluded, “a stay for an indefinite period, entered during a preliminary proceeding, does affect the above-stated applicable statutory pendency goals, and affects them in a significant way.”

The Board addressed Petitioner’s positions in the course of reaching its conclusions, indicating that Petitioner’s contentions are based on speculation and conjecture; that the requested stay would one-sidedly detriment Patent Owner in a manner inconsistent with the “just” factor of 37 C.F.R. § 42.1(b); and that Petitioner had not explained sufficiently “why its Petition in this proceeding would be of value to Petitioner with regard to claims not presently in U.S. Patent 5,954,781.”

Mercedes-Benz USA, LLC, and Mercedes-Benz U.S. International, Inc. v. Velocity Patent, LLC, IPR2015-00290 
Paper 9: Order Denying Request for Authorization to File Motion to Stay IPR Proceeding 
Dated: January 21, 2015
Patent: 5,954,781 
Before: Jameson Lee, Glenn J. Perry, and Peter P. Chen
Written by: Lee