Symantec Corp. v. RPost Commc’ns Ltd.

Addressing a motion to stay an inter partes review (IPR) by the patent owner, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB, the Board) denied the patent owner’s request for stay, finding that the request for stay was not compatible with the statutory deadline to issue a final determination of the review no later than one year of institution.  Symantec Corp. v. RPost Commc’ns Ltd., Case No. IPR2014-00357 (PTAB, July 31, 2014) (Clements, APJ).

Symantec petitioned the Board for IPR of RPost’s patent.  RPost moved to stay this review because ownership of the patent was at issue in a state court case slated for trial later in the year.  Given the correlation between ownership and standing, three federal district court actions involving the patent were stayed pending adjudication of the ownership issue in state court.  Symantec, a party to one of the federal actions, did not oppose a stay in district court.  For the same reasons the federal cases were stayed, RPost asked the Board to grant a stay of the IPR.

The Board denied RPost’s motion for three reasons.  First, the Board is not subject to the ownership, standing and jurisdictional issues to which a district court is subjected.  Second, even though trial is scheduled for a date specific, it is unknown when the ownership issue will ultimately be resolved after post-trial briefing, appeals and the like.  Third, a stay is incompatible with the Congressional mandate that a final determination on the review be issued within one year.  Even if the trial disposed of the ownership issue, a stay as short as three months would detrimentally impact the Board’s ability to meet the deadline.  The pending ownership dispute was not sufficient cause to deviate from the Congressional one-year deadline.