The America Invents Act gives the U.S. Patent and Trademark Office director authority to stay a reexamination or reissue proceeding, pursuant to Title 35 of the U.S. Code, Section 315(d).
This article will discuss the trend of how the board exercises this power and responds to motions to stay, and how they may affect Patent Trial and Appeal Board practice.
Background
The amended AIA provides that in an inter partes review, the director may, at their discretion, stay, transfer, consolidate or terminate any parallel matter before the USPTO.
Accordingly, Title 37 of the Code of Federal Regulations, Section 42.122(a), provides this power to the PTAB, authorizing the board to “enter any appropriate order regarding the additional matter including providing for the stay, transfer, consolidation, or termination of any such matter.”
Section 42.3 provides the PTAB authority to exercise exclusive jurisdiction within the USPTO over an involved application and patent during the proceeding.
USPTO Guidance
Since the passage of the AIA, there has been a growing trend where the PTAB exercises its authority to stay parallel reexamination or reissue proceedings, whether they were initiated by the patent owner, petitioner or a third party.
These decisions are influenced by various factors, including the stage of the reexamination or IPR and whether overlapping issues between the proceedings are likely to create redundancy or unnecessary complications.
These factors were clarified and refined in the USPTO's “Notice Regarding Options for Amendments by Patent Owner Through Reissue or Reexamination During a Pending AIA Trial Proceeding” published in April 2019.
The notice has provided guidelines for handling such stays, resulting in more consistent and comprehensive analyses in the PTAB's decisions. These factors are:
Whether the claims challenged in the AIA proceeding are the same as or depend directly or indirectly on claims at issue in the concurrent parallel office proceeding;
Whether the same grounds of unpatentability or the same prior art are at issue in both proceedings;
Whether the concurrent parallel office proceeding will duplicate efforts within the office;
Whether the concurrent parallel office proceeding could result in inconsistent results between proceedings — e.g., whether substantially similar issues are presented in the concurrent parallel office proceeding;
Whether amending the claim scope in one proceeding would affect the claim scope in another proceeding;
The respective timeline and stage of each proceeding;
The statutory deadlines of the respective proceedings;
Whether a decision in one proceeding would likely simplify issues in the concurrent parallel office proceeding or render it moot.
The guidance also confirms that the PTAB may consider these factors absent a motion and “may impose a stay sua sponte.”
The Trend
In the years immediately following the AIA's enactment, from 2013 to 2017, there was considerable uncertainty about how the PTAB would stay parallel proceedings, and the board's decisions often reflected this ambiguity.
During this time, stakeholders were still learning how the newly established inter partes review process would interact with other patent office proceedings. The parties often request a stay during a call with the opposing counsel and the administrative patent judge, and the APJ later issues an order without a formal motion sua sponte.
In these early years, the denials of stay were often the result of poor timing. For instance, some requests were raised prematurely — before the IPR was even instituted — making it difficult for the PTAB to justify staying the parallel proceeding.
Conversely, some requests were raised too late, such as after the reexamination had already mailed a final rejection or a notice of intent to issue an ex parte reexamination certificate.
Noticeably, there were inconsistencies in cases where the ex parte reexamination had only just been initiated. Some judges believed that it made little sense to stay a much slower reexamination when the IPR would likely resolve key issues within a statutory 12-month period. Others, however, felt that it was worth staying the reexamination anyway, leading to differing outcomes.
The issuance of the notice in April 2019 marked a pivotal moment in the PTAB's handling of motions to stay. This notice provided clear guidance on how the PTAB should make a stay decision while an IPR was pending.
The PTAB's analysis in stay decisions therefore became far more thorough and comprehensive. As a result, since 2019, it has been increasingly difficult for parties to oppose a stay.
Also, noticeably, sua sponte stays have become less common, reflecting the PTAB's increasing reliance on motions filed by the parties themselves.
Key Insights
The post-2019 trend illustrates the PTAB's maturation in exercising its stay authority, balancing the need for efficiency with fairness to both patent owners and petitioners.
With the structured approach set forth in the notice, the PTAB has effectively minimized redundancy and optimized the handling of parallel proceedings. The data speaks clearly: Since the issuance of the notice, there has been only one instance where an authorization to file a motion to stay was denied, and that denial was not based on a detailed analysis of the merits but rather on the technicality of timing.
This trend indicates that the PTAB is highly unlikely to deny a stay when the merits of the request are properly considered, making it exceedingly difficult to successfully argue against a stay in most cases.
For those who desire a stay, a strong argument on the merits will generally succeed. Parties seeking a stay should prepare to address all the factors outlined in the notice.
Opposing a stay, on the other hand, has become significantly more challenging under the current framework. Data shows that it is difficult to effectively argue against a stay on substantive grounds.
Rather, technical issues such as improper timing can play an important role in preventing a stay. For parties opposing a stay, it may therefore be more effective to focus on the procedural technicalities of the case.
In fact, whether seeking or opposing a stay, timing and coordination are always crucial. Parties must be strategic about when to file their motions, ensuring that the request aligns with key stages of the IPR and reexamination or reissue.
Conclusion
The PTAB's consistent approach to granting stays since 2019 means that parties seeking a stay should focus on making a strong case on the merits, while parties opposing a stay may need to rely more on technical arguments such as timing or procedural irregularities.
It is essential to understand the PTAB's approach when considering motions to stay and prepare arguments accordingly.
Originally published by Law360
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