Takeaway: Requesting the stay of a reexamination proceeding prior to a decision to institute trial will likely be found to be premature.

In its Order, the Board denied Patent Owner’s request to file a motion to stay a co-pending reexamination proceeding. The ’049 Patent is the subject of Reexamination Control No. 95/001,850, which was filed December 12, 2011.  The Reexamination found a substantial new question of patentability and rejected all claims subject to reexamination (claims 1, 2, 5, 6, 9, 11, 12, 15, 16, 19, 21-23, 25, and 26).  Patent Owner filed a Notice of Appeal and an Appeal Brief on June 17, 2014.  The Third Party Requester did not file a Respondent Brief, and the proceeding now awaits the Examiner’s Answer.

Patent Owner argued that there is significant overlap between the appealed rejections and the asserted grounds in the Petition. Therefore, it would be an inefficient and excessive use of PTO resources to continue with both proceedings.  Petitioner did not take a position on whether the stay should be granted, but indicated that since it has been approximately two months from the filing of the Appeal Brief, there is no urgency in granting a stay, and granting the stay prior to a decision to institute the instant proceeding would be premature.  The Board agreed, and allowed Patent Owner to renew its request in the event that trial is instituted.

Goertek, Inc. and Goertek Electronics, Inc. v. Knowles Electronics, LLC, IPR2014-01009
Paper 7: Order on Conduct of the Proceeding
Dated: August 29, 2014
Patent 8,018,049 B2
Before: Kevin F. Turner, Benjamin D. M. Wood, and Michael J. Fitzpatrick
Written by: Turner