Anderson v. Dionex Corp.

Under 37 CFR § 1.645(d), which provides that "[a]n administrative patent judge may stay proceedings in an interference," a stay pending a parallel district court infringement action is committed to the administrative patent judge's discretion. The Board decides by balancing factors: different burdens of proof, the applicant's right to prosecute, issues present only in the interference, public interest, prejudice to the applicant, and duplicate effort. Where the factors favored the applicant, the Board denied the stay. No prior precedent directly addressed this issue; the Board cites only a non-precedential opinion by Judge Schafer in Rosenthal v. Mowrey-McKee, 50 USPQ2d 1863 (Bd. Pat. App. & Int. 1999), as consistent with its result. A party that wants an interference stayed because of a parallel civil action, here the senior party Dionex, must show real reasons for delay. The Board saw little prejudice to Dionex, and the court's burden and scope differences did not help it. The applicant, Anderson, whose assignee Alltech was the accused infringer, keeps its right to have priority decided without waiting for the civil action, and it keeps its patent term rights. The Board relied on Ethicon, Inc. v. Quigg, Kaufman Co. v. Lantech, Inc., Bosies v. Benedict and Bruning v. Hirose for the different burdens of proof. It also cited Pritchard v. Loughlin (CCPA) for the public interest in the running of patent term. LEGAL TEST OR STANDARD: Whether to stay is discretionary under Rule 645(d), 37 CFR § 1.645(d). The Board weighed seven considerations: 1. Different burdens of proof; 2. Anderson's right to prosecute its application; 3. Issues in the interference not present in the civil action for infringement; 4. Public interest; 5. Possible prejudice to Anderson; 6. Duplicate effort; 7. Balancing interests. TRIGGERING FACTS: Dionex, the senior party and patent owner, moved to stay pending final judgment in a district court infringement action against Alltech, which owns the Anderson application. The interference involved copending applications, so priority and unpatentability are proved by a preponderance, while invalidity in the civil action requires clear and convincing evidence. The civil action did not cover all interference issues (best mode and enablement under § 112 could be raised only in the interference), and no trial date was set. Anderson's patent term could be eroded by delay, and no stay had been sought in the civil action. KEY QUOTE: "On balancing all factors discussed above, we believe the scales are tipped--rather decidedly--in favor of denying a stay." (Paper 29, p. 11) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board notes that its decision is consistent with the non-precedential opinion in Rosenthal v. Mowrey-McKee, 50 USPQ2d 1863 (Bd. Pat. App. & Int. 1999). PRACTICE TIP: Before moving to stay an interference for a parallel civil action, build a record on each factor: show a firm trial date, overlap of issues, concrete prejudice to the other side and the public, and that a stay of the court action was sought. Do not rely on bare representations about when the court will finish.