Takeaway: The Board may not authorize a motion to stay a proceeding where a filing necessitating the stay, such as a writ of mandamus to the Federal Circuit, has not yet been filed and where modifying due dates in the scheduling order could alleviate any prejudice to the moving party.

In its Decision, the Board denied Patent Owner’s second request to file a motion to stay the proceeding “pending a decision of the U.S. Court of Appeals for the Federal Circuit on a second petition for a writ of mandamus, in view of [the Board’s] denial of Patent Owner’s first request for a motion to stay.” In particular, the Board found Patent Owner’s request to be premature and that there was insufficient cause to deviate from the normal course.

With regard to Patent Owner’s first request, Patent Owner had requested authorization to file a motion to stay the CBM proceeding pending decision of a Federal Circuit appeal, which was estimated to issue in January 2017. The Board denied the request, particularly finding that the proposed stay would not allow the proceeding to be completed either within the statutory one-year period or a period extended by six months.

Patent Owner’s second request for authorization to file a motion to stay was related to a not-yet-filed writ of mandamus, which Patent Owner expected to file within approximately one week. Patent Owner estimated that the Federal Circuit would decide the second petition within approximately one month.

The Board noted that because the writ of mandamus had not been filed, Patent Owner’s request was premature. On the merits of the request, the Board was not persuaded that Patent Owner’s alleged prejudice in being required to prepare a Patent Owner Response was sufficient to stay the proceeding. In particular, the Board noted that the parties are free to stipulate to a different due date for the Patent Owner Response in the Scheduling Order to alleviate any prejudice.

TradeStation Group, Inc. v. Trading Tech. Int’l, Inc., CBM2015-00161

Paper 40: Decision Denying a Second Request for a Motion to Stay CBM Proceeding

Dated: March 24, 2016

Patent: 6,766,304 B2

Before: Sally C. Medley, Meredith C. Petravick, and Jeremy M. Plenzler

Written by: Petravick