MotionPoint Corporation v. TransPerfect Global, Inc.: Decision on Motion to Stay CBM2014-00060
Thursday, August 21, 2014

Takeaway: The Board may deny a motion to stay if there is not significant overlap between the issues in the proceeding for which a stay is being sought and those in the other proceeding.

In its Decision, the Board denied Patent Owner’s Motion to Stay Reexamination Control No. 95/002,372 (“the Reexamination”) involving the subject ‘022 patent.  Patent Owner had moved to stay the Reexamination, and Petitioner had opposed.

Patent Owner had filed three separate covered business method petitions – namely, in the instant CBM2014-00060 proceeding, in CBM2014-00066, and in CBM2014-00067 – challenging claims 1-28 of the ‘022 patent. In the instant proceeding, Petitioner challenged the patentability of claims 1-28 under 35 U.S.C. § 112.  The challenges in the other two proceedings were based on 35 U.S.C. §§ 102 and 103.

The request for the Reexamination was filed by Petitioner in 2012. Last month (July 2014), the Examiner in the Reexamination issued an Action Closing Prosecution (“ACP”) which rejected original claims 1-28 of the ‘022 patent as well as added claims 29-66 under 35 U.S.C. §§ 102 and 103 based on numerous references.  According to the Board, “the ACP states 142 separate claim rejections under §§ 102 and 103” and “rejects several of the additional claims added by amendment under 35 U.S.C. § 112.”  Shortly after that, the Board denied institution of covered business method reviews of claims 1-28 of the ‘022 patent in CBM2014-00066 and CBM2014-00067, but instituted review of these claims in the instant proceeding.

Patent Owner’s Motion to Stay asserts a significant overlap of issues between the instant covered business method proceeding and the Reexamination. The Board took issue with this characterization, since the current issues with respect to claims 1-28 in the Reexamination are limited to compliance with 35 U.S.C. §§ 102 and 103, whereas the challenge in the instant covered business method proceeding is under 35 U.S.C. § 112.  Recognizing this fact, Patent Owner asserted that although § 112 was not at issue with respect to claims 1-28 in the Reexamination, “§ 112 is a threshold issue which informs the applicability of §§ 102 and 103.”  However, the Board was not persuaded by this argument.  According to the Board, “[t]he § 112 issues in this proceeding involve whether the claims meet the written description and definiteness requirements of § 112” and do not overlap the prior art issues before the Examiner in the Reexamination.

Patent Owner also proffered a claim construction argument, arguing that the Board could adopt a claim construction in its final written decision that differed from the preliminary claim construction indicated by the Board in its Decision to Institute.  Nonetheless, the Board dismissed this argument as being speculative.  “Equally speculative and unavailing[,]” according to the Board, were “Patent Owner’s arguments regarding possible claim amendments and estoppels.”  For example, the Board thought it unlikely that Patent Owner would amend claims 1-28 in the instant proceeding.  The Board also noted that its denial of Patent Owner’s Motion to Stay was consistent with denial of a prior stay request by the Office.

MotionPoint Corporation v. TransPerfect Global, Inc., CBM2014-00060
Paper 16: Decision on Motion to Stay
Dated: August 19, 2014
Patents: 6,857,022
Before: Thomas L. Giannetti, Bart A. Gerstenblith, and David C. McKone
Written by: Giannetti
Related Proceedings: Reexamination Control No. 95/002,372; CBM2014-00066; and CBM2014-00067

 

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