Additional Briefing Invited on Binary Application of
Last week I pointed out that the litigation timing factor introduced by
In that same post, I pointed out that a request was made to the
The Order (here) explains that the application of
1. Whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted;
2. Proximity of the court's trial date to the Board's projected statutory deadline for a final written decision;
3. Investment in the parallel proceeding by the court and the parties;
4. Overlap between issues raised in the petition and in the parallel proceeding;
5. Whether the petitioner and the defendant in the parallel proceeding are the same party; and
6. Other circumstances that impact the Board's exercise of discretion, including the merits.
Factors 1-4 are not necessarily new in this context. Factor 1 may not be a factor at all in some cases (i.e., if the case is stayed, there is no trial date and
I never found factor 4 especially insightful. There will always be a degree of overlap, whether common claims, common claim terms or the common application of the strongest pieces of prior art; consistency should be expected.
Factor 6 has been applied by some panels, noting the perceived strength of a petition. (see dissent in Sand Revolution). In my view, factors 2-3 and 5-6 are the most balanced in this context, with perhaps the addition of factors directed to litigation realities.
The Order notes that the factors are not exclusive, and, for example, the Board would also consider movement in the district court schedule since the filing of the petition. Additional factors might include: the number of times the patent has been asserted in the past; relatedly, the nature of the Patent Owner's business (i.e., is it solely a licensing entity); and the degree to which the subject patent has related prosecution currently before the agency.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
Mr
NY 10036-8704
Tel: 2125969000
Fax: 2125969090
E-mail: Mondaq@ropesgray.com
URL: www.ropesgray.com
© Mondaq Ltd, 2020 - Tel. +44 (0)20 8544 8300 - http://www.mondaq.com, source