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  • The opinions, commentary and characterizations provided to this online forum by the authors and moderators are provided for encouraging discussion, thought and debate on important post grant issues. These postings are in no way representative of the opinions of Oblon Spivak et al., or its clients.

Stays Pending USPTO Review to Increase as a Result of Speedier AIA Options

Posted On: Apr. 29, 2013   By: Scott A. McKeown
Stay pending post grantIncreased Speed and Heightened Threshold Showing for New PTAB Proceedings Drive Stays

The primary business distinctions between the USPTO Patent Trial & Appeal Board (PTAB) proceedings and traditional court based patent invalidity proceedings are the vast improvements in cost, predictability, effectiveness, and speed of PTAB proceedings— but it is the speed and effectiveness that is changing the perspective of the judiciary on staying litigation pending USPTO proceedings.

As most are aware, the old patent reexamination system, at least on the inter partes side, has been replaced by IPR. IPR must be concluded by statute within 12-18 months, a marked improvement over the (roughly speaking) previous 6+year path through the Central Reexamination Unit (CRU), Board of Patent Appeals & Interferences (BPAI) and Court of Appeals for the Federal Circuit (CAFC). These changes are being quickly recognized by courts, several of which have agreed to halt litigation proceedings upon the mere filing of an IPR (months in advance of an Order to grant the IPR petitions).

Previously, when an inter partes patent reexamination was the basis for the motion to stay the court proceeding, the strongest plaintiff arguments in opposition were that the significant USPTO delay would prove prejudicial to the plaintiff. Indeed, some of the cases stayed in the early days of inter partes reexamination are only now being reopened, 8 years later. In Graphic Packaging International, Inc., v. C.W. Zumbiel Co. (NDGA) a stay was entered pending inter partes patent reexamination in 2004. the underlying reexamination finally ended a few weeks back (April 11th) by printing of the reexamination certificate, an 8 year journey in total. (order here). The presiding judge commemorated the reopening of the case with a quote from Hamlet.

For who would bear the whips and scorns of time,
Th’ oppressor’s wrong, the proud man’s contumely,
The pangs of despised love, the law’s delay,
The insolence of office, and the spurns
That patient merit of th’ unworthy takes,
When he himself might his quietus make
With a bare bodkin?
– William Shakespeare, Hamlet, Act 3, Scene 1.
For who would bear the whips and scorns of time,
Th’ oppressor’s wrong, the proud man’s contumely,
The pangs of despised love, the law’s delay,
The insolence of office, and the spurns
That patient merit of th’ unworthy takes,
When he himself might his quietus make
With a bare bodkin?
– William Shakespeare, Hamlet, Act 3, Scene 1. (emphasis added)
Fortunately, Graphic Packaging endured the 8 year journey through the USPTO rather than gouging their wrists with a bare bodkin. Of course, now they are thrust back into discovery and district court proceedings…those sharp objects should probably be kept out of reach for awhile longer.

While inter partes reexamination is no longer available having been replaced by the speedier AIA option (IPR), hundreds of these legacy proceedings are still making their way through the USPTO.

This case was brought to my attention by the great Docket Navigator.

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