`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` Paper 14
`
` Entered: October 2, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MASTERCARD INTERNATIONAL INCORPORATED,
`Petitioner,
`
`v.
`
`JOHN D’AGOSTINO,
`Patent Owner.
`
`
`Case IPR2014–00543
`Patent 8,036,988
`
`
`
`Before SALLY C. MEDLEY, KARL D. EASTHOM, and
`KALYAN K. DESHPANDE, Administrative Patent Judges.
`
`DESHPANDE, Administrative Patent Judge.
`
`
`
`DECISION
`Motion to Stay Reexamination Proceeding
`35 U.S.C. § 315(d)
`
`
`
`Case IPR2014–00543
`Patent 8,036,988
`
`
`Motion to Stay Ex Parte Reexamination Proceeding 90/012,517
`The Board held an initial conference call with Petitioner and Patent Owner
`on September 17, 2014. Petitioner requested authorization to file a motion to stay
`Ex Parte Reexamination Proceeding 90/012,517 (“the Reexamination”), because a
`Notice of Intent to Issue a Reexam Certificate (“NIRC”) was mailed on September
`12, 2014 that allegedly is inconsistent with our Decision to Institute. Paper 10, 1.
`We authorized Petitioner to file a motion to stay. Petitioner filed a motion to stay
`the Reexamination (“Mot.”) on September 22, 2014. See Paper 11. Patent Owner
`filed an opposition (“Opp.”). See Paper 13.
`Pursuant to 35 U.S.C. § 315(d):
`Notwithstanding sections 135(a), 251, and 252, and chapter 30, during
`the pendency of an inter partes review, if another proceeding or matter
`involving the patent is before the Office, the Director may determine
`the manner in which the inter partes review or other proceeding or
`matter may proceed, including providing for stay, transfer,
`consolidation, or termination of any such matter or proceeding.
`
`See also 37 C.F.R. § 42.122(a) (“Board may . . . enter any appropriate order
`regarding . . . stay, transfer, consolidation, or termination”). The Board ordinarily
`will not stay a reexamination because, in the absence of good cause,
`reexaminations are conducted with special dispatch. See 35 U.S.C § 305.
`Petitioner argues a stay is necessary to “prevent inconsistency, confusion
`and the appearance that the PTO and/or this board has sanctioned two different
`diametrically opposed decisions.” Mot. 2. Petitioner specifically argues that
`“because adversarial proceedings are more likely to reach the correct result . . . the
`Reexamination should be stayed pending final resolution of the inter partes
`2
`
`
`
`
`
`Case IPR2014–00543
`Patent 8,036,988
`
`review.” Id. at 2-3. Patent Owner contends that a stay is against the Board’s
`policy because the results of the Reexamination are known and public. Opp. 2-3.
`We agree with Patent Owner. The Reexamination resulted in the issuance of
`a NIRC and, therefore, the Examiner’s decision is known and public. Staying the
`reexamination proceeding would not undue what already has been done. See
`Toshiba Corporation v. Intellectual Ventures II LLC, Case IPR2014-00317, Paper
`10, 3 (PTAB May 6, 2014). Accordingly, we are not persuaded by Petitioner’s
`argument.
`Petitioner further argues that the CRU Examiner “appears to not have had
`the benefit of this Board’s thorough Decision.” Mot. 1-2. However, our Decision
`to Institute inter partes review was available to the CRU Examiner on the mailing
`date of September 4, 2014. See Paper 8. The NIRC was mailed on September 12,
`2014. Paper 10, 2. Therefore, we are not persuaded that the CRU Examiner did
`not have the benefit of our Decision to Institute inter partes review in concluding
`to issue the NIRC, because our Decision was available for eight days before the
`CRU Examiner issued the NIRC. In any event, Petitioner has not shown that
`granting a stay of the reexamination proceeding means necessarily that the CRU
`Examiner will make changes based on the Decision to Institute. Petitioner
`additionally contends that the Reexamination should be stayed because (1) the
`CRU’s conclusion is incorrect and (2) Patent Owner’s position with regards to the
`motion to stay has been inconsistent. Mot. 3-5. Petitioner has not shown,
`however, how these arguments are relevant to our determination of whether to stay
`the Reexamination. Accordingly, we are not persuaded by Petitioner to stay the
`
`
`
`3
`
`
`
`Case IPR2014–00543
`Patent 8,036,988
`
`Reexamination.
`
`
`Order
`
`It is
`ORDERED Petitioner’s motion to stay Ex Parte Reexamination Proceeding
`90/012,517 is denied;
`
`
`
`PETITIONER:
`
`Robert Scheinfeld
`Eliot Williams
`BAKER BOTTS LLP
`robert.scheinfeld@bakerbotts.com
`eliot.williams@bakerbotts.com
`
`PATENT OWNER:
`
`Stephen J. Lewellyn
`Brittany J. Maxey
`MAXEY LAW OFFICES, PLLC
`s.lewellyn@maxeyiplaw.com
`b.maxey@maxeyiplaw.com
`
`
`
`4
`
`
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