Takeaway: In determining whether to waive the three-month time limit for filing Patent Owner’s preliminary response, the Board will consider the impact of the resultant delay on the goal of completing proceedings in a manner that is just, speedy, and inexpensive.

In its Order, the Board denied Patent Owner’s request for authorization to file a motion for a stay of the deadline to file a Preliminary Response. Patent Owner’s bases for requesting such authorization related both to another proceeding (CBM2014-00008) involving the same ’807 patent and the same parties, and recent Supreme Court opinions in the cases of Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014) and Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014).

The Petition for the instant CBM2014-00176, which was filed on August 15, 2014, challenged claims 1-42 of the ’807 patent under each of 35 U.S.C. §§ 101 and 112. Patent Owner’s Preliminary Response is currently due on November 20, 2014.  In the co-pending CBM2014-00008 proceeding, the Board had instituted trial on a single patent-eligibility ground under 35 U.S.C. § 101 with respect to claims 1-9, 13, and 34-42 of the ’807 patent.  In CBM2014-00008, oral hearing is scheduled for November 5, 2014, and a final decision is expected before March 31, 2015.  The Alice and Nautilus opinions, dealing with patent-eligibility under 35 U.S.C. § 101 and indefiniteness under 35 U.S.C. § 112, respectively, were issued by the U.S. Supreme Court between the filing of the Petition in the CBM2014-00008 and the filing of the Petition in the instant CBM2014-00176.

In view of these points, Patent Owner had requested a stay of the deadline for filing its Preliminary Response in the instant CBM-00176. In particular, Patent Owner had asked for a stay until approximately one month after the Board’s final decision in CBM2014-00008.  It was Patent Owner’s contention that the requested stay would promote efficiency and facilitate Patent Owner’s Response to the Petition (e.g., due to overlap of issues relating to the Alice decision in both cases).  According to the Board, the requested stay was expected to result in a delay of approximately six months.  Petitioner disputed Patent Owner’s contentions and argued that a delay of six months was not justified.

The Board agreed with Petitioner. Although the Board agreed that there may be some overlap between the matters, the Board denied Patent Owner’s request for a stay for a number of reasons, including the fact that CBM proceedings are to be conducted on an expedited basis; that waiver of the rule that Patent Owner’s Preliminary Response must be filed within three months weighed against the goal of completing the proceeding in expedited fashion; and that “there are several issues unique to the ’176 Review for which delay would be unjustified” (e.g., CBM2014-00176 challenges claims for which the Board denied institution in CBM2014-00008, and CBM2014-00176 challenges claims under 35 U.S.C. § 112, whereas CBM2014-00008 does not).

Westlake Services, LLC v. Credit Acceptance Corp., CBM2014-00176
Paper 13: Order on Conduct of the Proceedings
Dated: October 28, 2014 
Patent: 6,950,807 
Before: Justin T. Arbes, David C. McKone, and Gregg I. Anderson 
Written by: McKone
Related Proceeding: CBM2014-00008