Stay To Force PTAB Outside of Statutory Time Limit?

Today, the Federal Circuit issued a stay of further Patent Trial & Appeal Board (PTAB) proceedings pending the St. Regis Mohawk Tribe’s sovereign immunity appeal. The appeal challenges the Board’s determination that the Tribe is not immune from its proceedings as a sovereign entity. As a reminder, the tribe is alleged to be the new owner of Allergan patents relating to the ophthalmic Restasis®

Also, today, the Board cancelled the hearing scheduled for April 3rd. (order here). The stay will be automatically lifted the day after the oral argument, scheduled for some time June (presumably the court week of the 4th). (order here)

Of note, the stayed IPR proceedings were already extended beyond the 12 month trial deadline as a result of joinder. (i.e., an additional 6 months is permitted by 35 U.S.C. § 316)(a)(11) for joinder cases).

Now, the 18 month mark stands at June 8th. If the hearing were scheduled for June 8th, the stay will not be lifted until after expiration. In that case, the Board may be forced to argue that the Federal Circuit’s stay tolled the deadline. Even if scheduled a few days before the 8th, the Board will be hard pressed to conduct the cancelled hearing, and issue an opinion within a matter of days.

At least one other appellant is now arguing that the PTAB is divested of jurisdiction once the statutory clock expires.

Scott A. McKeown is an author of the Patents Post Grant.