/>iTakeaway: Patent Owner’s appeal to the Federal Circuit in a related inter partes review proceeding involving the same patent, by itself, does not justify granting a motion to stay in a given inter partes review proceeding or allow the Board to waive the one-year final written decision requirement.
In its Decision, the Board denied Patent Owner’s Motion to Stay the instant proceeding pending the outcome of Patent Owner’s appeal to the U.S. Court of Appeals for the Federal Circuit in related IPR2013-00082. According to the Board, Patent Owner had not met its burden of demonstrating that the instant proceeding should be stayed for at least a number of reasons.
The Board began its analysis by setting forth a timeline of relevant events. In this regard, a Petition requesting an inter partes review of claims 1-4, 29-33, and 41 of the ’791 Patent was filed on December 15, 2012, which resulted in the Board instituting an inter partesreview in IPR2013-00082 as to claims 1-4, 29-33, and 41 based on anticipation or obviousness in view of Woodhill. In similar fashion, Petitioner requested inter partes review of claims 1-4, 29-33, 35, and 41 of the ’791 Patent on October 10, 2013, which resulted in the Board instituting an inter partes review in the instant proceeding as to claims 1-4, 29-33, 35, and 41 based on anticipation or obviousness in view of Woodhill.
Of these two cases, the earlier-filed IPR2013-00082 finished first, with the Board’s Final Written Decision in IPR2013-00082 concluding that claims 1-4, 29-33, and 41 of the ’791 Patent were unpatentable as anticipated by, or obvious over, Woodhill. Patent Owner then appealed the Board’s Final Written Decision in IPR2013-00082 to the U.S. Court of Appeals for the Federal Circuit on May 20, 2014.
The Board went on the note that both the instant proceeding and IPR2013-00082 challenge the ’791 Patent based on anticipation or obviousness in view of the same reference, namely, Woodhill. However, the instant proceeding presents new testimony, new witnesses, and relies on new disclosures in Woodhill, as compared to those in IPR2013-00082. Moreover, the instant proceeding challenges an additional claim, i.e., claim 35, of the ’791 Patent not challenged in IPR2013-00082. In view of these differences, the Board concluded that “granting [Patent Owner’s] Motion to Stay would contravene our mandate to secure the just, speedy, and inexpensive resolution of this proceeding (see 35 U.S.C. § 316(b); 37 C.F.R. § 42.1(b)).”
Furthermore, the Board was not persuaded by Patent Owner’s contention that the grant of the Motion to Stay in the instant proceeding would allow the Board to waive the requirement that it must issue its final written decision under 35 U.S.C. § 316(a)(11) and 37 C.F.R. § 42.100(c) within one year of the institution of the instant proceeding. In connection with this point, the Board emphasized that since the instant proceeding was instituted on April 15, 2014, the Board must issue its final written decision in this proceeding no later than April 15, 2015. The Board went on to state that Patent Owner had not sufficiently explained how the requested stay would allow the Board to waive the one-year requirement in this proceeding, especially in view of the noted differences between the instant proceeding and IPR2013-00082.
Rackspace US, Inc. and Rackspace Hosting, Inc. v. Personal Web Technologies, LLC and Level 3 Communications, IPR2014-00057
Paper 23: Decision on Patent Owner’s Motion to Stay
Dated: July 23, 2014
Patent: 5,978,791
Before: Kevin F. Turner, Joni Y. Chang and Michael R. Zecher
Written by: Zecher
Related Proceeding: EMC Corp. v. Personal Web Techs., LLC, IPR2013-00082
