Paper 9
`Date: January 21, 2015
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`Trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`MERCEDES-BENZ USA, LLC, and
`MERCEDES-BENZ U.S. INTERNATIONAL, INC.
`Petitioner,
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`v.
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`VELOCITY PATENT, LLC,
`Patent Owner.
`____________
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`Case IPR2015-00290
`Patent 5,954,781
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`Before JAMESON LEE, GLENN J. PERRY, and PETER P. CHEN,
`Administrative Patent Judges.
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`LEE, Administrative Patent Judge.
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`
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`Order
`Denying Request for Authorization to File
`Motion to Stay IPR Proceeding
`37 C.F.R. § 42.5
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`

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`IPR2015-00290
`Patent 5,954,781
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`Introduction
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`A conference call was held on January 12, 2015. The participants were
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`respective counsel for the parties and Judges Lee, Perry, and Chen. Counsel for
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`Petitioner initiated the call to request permission to file a motion to stay this
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`proceeding. We have not yet instituted trial. The Notice According Filing date
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`issued on December 9, 2014 (Paper 2), and Patent Owner’s Preliminary Response
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`is not due until March 9, 2015. The request is denied.
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`Discussion
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`According to Petitioner, Reexamination 90/013,252, directed to U.S. Patent
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`No. 5,954,781, the patent involved in this proceeding, is pending and progressing.
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`Petitioner notes that it does not know what new or amended claims, if any,
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`eventually will emerge from reexamination of the involved patent. Petitioner
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`explains that because it already has been sued by Patent Owner, by the time a
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`reexamination certificate issues, perhaps with new or amended claims, Patent
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`Owner will likely argue that institution of another inter partes review on the same
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`patent is precluded by the "1 year" time bar of 35 U.S.C. § 315(b).
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`Petitioner adds, however, that it does not believe the potential argument by
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`Patent Owner has merit. Nevertheless, Petitioner prefers to not have to respond to
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`such argument by Patent Owner, if and when Petitioner files a new petition after
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`the reexamination certificate issues. Thus, Petitioner would like to file, in this
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`proceeding, a motion for stay, to await the outcome of reexamination. According
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`to Petitioner, such a stay would obviate a need for it to file a new petition after
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`issuance of a reexamination certificate, directed to new or amended claims.
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`2
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`IPR2015-00290
`Patent 5,954,781
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`Under 35 U.S.C. § 315(d), an inter partes review may be stayed, if the
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`patent on review also is involved in another proceeding or matter before the Office,
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`such as in the case of the present circumstance. A stay, however, generally is
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`undesirable because it lengthens the pendency of the proceeding. Indeed, we note
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`that "[a]ny modification of times will take any applicable statutory pendency goal
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`into account." 37 CFR § 42.5(c)(1) (Emphasis added).
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`Per 35 U.S.C. § 314(b), the Director shall determine whether to institute an
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`inter partes review within 3 months after receiving a preliminary response or, if no
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`such preliminary response is filed, the last date on which such response may be
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`filed. And if trial is instituted, 35 U.S.C. § 316(a)(11) requires that a final
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`determination be made within 1 year after the date the director notices the
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`institution of review, except that the period may be extended by not more than 6-
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`months, upon a showing of good cause.
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`At the outset, we reject any notion that no statutory pendency goal is
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`affected by a stay until a reexamination certificate issues. Even though no
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`preliminary response has been filed and no trial has been instituted, a stay delays
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`institution of trial, if a trial otherwise would be instituted, and also delays the date
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`of final determination in the trial. As a mathematical matter, one can argue:
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`(1) that because the institution of trial is delayed as much as the final determination
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`is delayed, any trial would be conducted within the period required by 35 U.S.C.
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`§ 316(a)(11), and also (2) that because no preliminary response has yet been filed,
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`any institution of trial, despite entry of a stay, would still occur within the period
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`required by 35 U.S.C. § 314(b).
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`We see the circumstance differently, because 37 C.F.R. § 42.1(b) provides
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`that the rules "shall be construed to secure the just, speedy, and inexpensive
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`resolution of every proceeding." (Emphasis added.) In that regard, we note that a
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`3
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`IPR2015-00290
`Patent 5,954,781
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`preliminary proceeding refers to that part of the proceeding prior to institution of
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`trial, and is a part of the overall proceeding. Thus, a stay for an indefinite period,
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`entered during a preliminary proceeding, does affect the above-stated applicable
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`statutory pendency goals, and affects them in a significant way.
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`In addition, the factual bases offered by Petitioner to support the filing of a
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`request for a stay are unpersuasive, for several reasons.
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`First, speculation and conjecture do not support a stay of proceeding.
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`Petitioner’s contentions are based on a series of speculation and conjecture.
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`Petitioner speculates that new or amended claims will result from the
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`reexamination proceeding at issue. Petitioner also speculates that such
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`hypothetical new or amended claims will, in its view, be unpatentable. Petitioner
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`further speculates that it will want to challenge those claims.
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`Second, a stay only would obviate an obstacle for Petitioner, to the sole
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`detriment of Patent Owner. Petitioner desires to deprive Patent Owner an
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`opportunity to make an argument, under 35 U.S.C. § 314(b), against a later
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`petition. The considerations are all one-sided and do not fit the "just" factor of
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`37 C.F.R. § 42.1(b).
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`Third, Petitioner does not adequately explain why its Petition in this
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`proceeding would be of value to Petitioner with regard to claims not presently in
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`U.S. Patent 5,954,781. The time bar under 35 U.S.C. § 314(b) for institution of
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`review appears to have equal application where Petitioner seeks to amend an
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`already filed petition rather than file a new petition. It applies to institution of
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`review, not to the filing of a petition. Whatever argument Petitioner would face in
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`the context of the filing of a new petition, it also would face in the context of a
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`motion to amend the existing Petition.
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`4
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`IPR2015-00290
`Patent 5,954,781
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`Conclusion
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`For the foregoing reasons, the articulated reasons for granting a stay do not
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`support a request for authorization to file a motion for stay.
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`It is
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`Order
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`ORDERED that Petitioner’s request for authorization to file a motion for
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`stay of this proceeding is denied.
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`5
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`IPR2015-00290
`Patent 5,954,781
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`For Petitioner:
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`Celine Crowson
`Ray Kurz
`Joe Raffeto
`HOGAN LOVELLS US LLP
`celine.crowson@hoganlovells.com
`raymond.kurz@hoganlovells.com
`joseph.raffetto@hoganlovells.com
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`For Patent Owner:
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`Patrick Richards
`RICHARDS PATENT LAW
`patrick@richardspatentlaw.com
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`Brian Kwok
`MAVRAKAKIS LAW GROUP
`bkwok@mavllp.com
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`6