Docket No. 2014-1724
O’MALLEY, BRYSON, HUGHES (D)
April 1, 2015
Brief Summary: FC determined it did not have jurisdiction over a motion to stay litigation regarding patents that are the subject of “pending CBMR petitions on which the PTAB has not yet acted”.
Summary: Intellectual Ventures (IV) brought suit against JP Morgan Chase (JPMC) alleging infringement of five patents. JPMC moved to stay the case pending the result of covered business method reviews (CBMR) regarding four of the asserted patents it was planning to file. It subsequently filed two of the petitions but “never filed the other two promised petitions.” The DC denied JPMC’s motion after applying the AIA four-factor test (§18(b)(1)), concluding “JPMC’s argument that the PTAB’s resolutions of the CBMR petitions would reduce the court’s workload was largely speculative, and was offset by IV’s right to a speedy trial.” JPMC then filed this request for interlocutory appeal. Footnote 2 indicates JPMC’s motion to stay was also based on the filing of 12 inter partes review (IPR) petitions but did not argue the stay ruling gave the FC jurisdiction. Footnote 4 explains that the FC “previously has taken judicial notice of post-appeal developments at the PTAB when assessing the propriety of a trial court’s motion to stay premised on the existence of a pending CBMR proceeding” (VirtualAgility, FC 2014) but that developments at the PTO in this case occurred “post-appeal, but [also] post-briefing and argument” and were never presented to the DC (“[W]e decline to expand the record before us…we ask only whether we have jurisdiction to consider the appeal from the order currently before us.”) And while the FC has “jurisdiction over an immediate interlocutory appeal from a district court’s decision on a motion to stay ‘relating to a [CBMR] proceeding for that patent’”, the question here is “whether the proper interpretation of CBMR ‘proceeding’ in §18(b)(2) encompasses pending CBMR petitions on which the PTAB has not yet acted.” The FC panel determined that it does not, concluding that “proceeding” means “beginning when the PTAB institutes review”. It also noted that their decision “does not prevent a district court from choosing to decide a motion before the PTAB acts on a CBMR petition” (citing VirtualAgility) and does not create inconsistent rights of appeal for the patentee (“Though a patentee cannot file an immediate appeal if a district court grants a motion to stay before the PTAB institutes a proceeding…the patentee never had the right to an interlocutory appeal over such interim, discretionary rulings. The patentee can, if appropriate, seek a writ of mandamus from this court, as it always has been authorized to do.”) Thus, the appeal was dismissed. Judge Hughes dissented, arguing “the majority’s conclusion relies on an overly narrow textual analysis and is at odds with the overall purpose of the AIA and the specific purpose of the CBM procedure”.