Takeaway: Stay of a reissue application may be appropriate where the challenged claims in a proceeding before the Board are included in the reissue application and where examination of the reissue application has not begun.

In its Order, the Board stayed examination of reissue application 14/803,629 pursuant to 37 C.F.R. § 42.3(a). The reissue application includes the original claims of the ’854 patent and was filed by Patent Owner on July 20, 2015.

The Board had directed Patent Owner to file a memorandum “stating (1) why the reissue proceeding should not be stayed (see 37 C.F.R. § 42.3(a)) and (2) why the reissue application was not brought to the attention of the Board sooner.” In response, Patent Owner indicated that neither Patent Owner nor Petitioner would oppose a stay, and the Board advised that the memorandum was therefore unnecessary.

The Board has authority to stay a reissue pursuant to 35 U.S.C. § 325(d) and 37 C.F.R. § 42.222(a). The Board explained that the challenged claims in the instant proceeding are pending in the related reissue application. The claims had not yet been examined in the reissue, with no Office Actions having been entered. In addition, neither party opposed a stay of the reissue.

Accordingly, under the circumstances, the Board determined “that a stay of the reissue proceeding would ‘secure the just, speedy, and inexpensive resolution’ of this proceeding.”

Hulu, LLC et al. v. iMTX Strategic, LLC, CBM2015-00147

Paper 18: Order Staying Reissue Proceeding

Dated: January 17, 2016

Patent: 7,269,854 B2

Before: Thomas L. Giannetti, James B. Arpin, and Matthew R. Clements