PTAB Denies Untimely Request to Stay Pending Reexaminations

By Geoffrey Gavin

In Juniper Networks, Inc. v. Chrimar Systems, Inc., IPR2016-01389, Paper 62 (PTAB Sept. 12, 2017), the PTAB denied Petitioner’s request to stay two reexaminations of patents that were also the subject of pending IPR proceedings.

In a pair of IPR proceedings filed in July 2016 (IPR2016-01389 and IPR2016-01399), Petitioner challenged two patents owned by Chrimar Systems, U.S. Patent Nos. 8,155,012 and 8,902,760.  Id. at 2.  During the August 31, 2017 oral argument in the IPRs, Chrimar notified the PTAB that the ‘012 and ‘760 patents were the subject of pending reexaminations that had been filed in May and August 2016, respectively.  Id.  The day after the oral argument, Petitioner emailed the PTAB to request authorization to file a motion to stay the reexaminations.  Id. at 2-3.

The PTAB noted that both Petitioner and Patent Owner were aware of the reexaminations by at least February 2017, but neither party updated its mandatory notices as required or otherwise advised the PTAB of the reexaminations before the oral argument.  Id. at 3.  Neither side could provide the PTAB with a satisfactory reason for their failure to provide timely notice of the reexams.  Id.

At the time of Petitioner’s stay request, both reexaminations were very far along.  Id.  The reexam of the ‘012 patent was the subject of an appeal brief, after all reexamined claims were rejected by the examiner, and a notice of intent to issue a reexamination certificate had been mailed in the reexam of the ‘760 patent.  Id.  The PTAB also observed that, although there was one prior art reference common to the reexaminations and the IPR proceedings, the reexaminations did not appear to involve both the same prior art and same claims as the grounds at issue in the IPR proceedings.  Id. at 3-4.

The PTAB denied Petitioner’s request for authorization file a motion to stay, stating that:

We are not persuaded that a motion to stay is appropriate at this time because 1) Petitioner knew about the related reexaminations at least since February 6, 2017, but waited until September 1, 2017, to request authorization for a motion to stay the related reexaminations; 2) the related reexaminations are at a very advanced stage now; and 3) the related reexaminations do not appear to involve the same grounds of unpatentability as these proceedings.

Id. at 4.