Many IPRs involve patents that concurrently are under reexamination. In those cases, the Board typically will consider whether to allow both the IPR and reexamination to proceed concurrently or whether to stay the reexamination. In many orders involving concurrent proceedings, the PTAB frequently states “The Board will not ordinarily stay a reexamination because, in the absence of good cause, reexaminations are conducted with special dispatch. See 35 U.S.C § 305.” See, e.g., Avaya Inc. v. Network-1 Sec. Solutions, Inc., IPR2013-00071, paper 9 at 2; see also Scotts Co. v. Encap, LLC, IPR2013-00110, paper 10 at 2. Despite that mandate, the Board typically stays concurrent reexaminations, finding a stay justified by the risk of duplicating work, inconsistent decisions, or disruption of the IPR by events in the reexamination.
In a few cases, the Board has allowed IPRs and reexaminations to proceed concurrently. In Apple Inc. v. VirnetX, Inc., IPR2013-00348, and six related IPRs involving four different patents in the same family, the Board denied patent owner’s request to stay the pending inter partes reexaminations on the same four patents. During a conference call, VirnetX requested a stay of the reexaminations, which Apple opposed. In the reexaminations, all the claims of all four patents stood rejected by the Office, and the Office had issued RANs in two of the reexaminations. The Board declined to stay the reexaminations, finding that a stay was not warranted because the reexaminations were at an advanced stage. See Apple Inc. v. VirnetX, Inc., IPR2013-00348, paper 6. Sidley Austin represents Apple in the IPRs and reexaminations.
Denso Corp. v. Beacon Navigation GmbH is another case where the Board did not stay a pending reexamination on the same patent. Shortly after the Board instituted a trial on the IPR petition, the examiner issued an ex parte reexamination certificate cancelling certain claims involved in the IPR. IPR2013-00026, paper 15 at 2. APJ Thomas L. Giannetti ordered that the cancelled claims (and the reference upon which the PTAB had instituted a trial for those claims) be dropped from the IPR proceeding. Id.
Most of the time, the Board grants a stay of concurrent reexaminations. Most often, the Board finds that, where the reexamination involves some of the same claims, a stay of a pending reexamination is justified to prevent duplication of work and the risk of inconsistent decisions. Invue Security Prods. v. Mechandising Techs., IPR2013-00122, paper 15 (staying ex parte reexamination filed the IPR petitioner where there was an overlap of claims); see also Sony Corp. of Am. v. Network-1 Sec. Solutions, IPR2013-00092, paper 10 (staying ex parte reexamination where there was an overlap of claims but not references cited). The Board has noted that staying the reexamination is efficient because the final written decision in the IPR could simplify the issues in the reexam. Gnosis S.p.A. v. Merck & Cie, IPR2013-00117, paper 10.
The Board has stayed a reexamination even where it was filed by a party not involved in the IPR. Avaya Inc. v. Network-1 Sec. Solutions, Inc., IPR2013-00071, paper 9 (staying ex parte reexamination not filed by any party to the IPR where there was an overlap of claims but not references cited); Gnosis S.p.A. v. Merck & Cie, IPR2013-00117, paper 10 (staying ex parte reexamination filed by anonymous party where there was an overlap of claims and references cited). For example, in Kyocera Corp. v. Softview LLC, APJ Brian J. McNamara ordered stayed three ex parte reexaminations instigated by two non-parties to the IPR where “all of the claims challenged in” the IPR “proceeding[s] would be reexamined in these three reexaminations” and the “grounds of challenge Petitioner asserts in th[ese] proceeding[s] are based on the same prior art as many of the rejections asserted against the patent in each of the [three] reexaminations.” IPR2013-00004, paper 11, IPR2013-00007, paper 10.
The Board also has found that a stay can be justified to prevent disruption of the IPR, which could occur if the patent owner made a request in the reexamination to amend the claims. In CBS Interactive et al. v. Helferich Patent Licensing, APJ Joni Y. Chang stayed a reexamination that involved some of the same references but not the same claims. IPR2013-00033, paper 15. APJ Chang noted that all of the claims challenged in the petition depended from claims that were involved in the reexamination, so amendment of claims in the reexamination could affect the scope of the IPR. Id. at 2. APJ Chang also noted that most of the petitioners were also the same parties who requested the reexamination. Id.
In Scotts Co. v. Encap, LLC, APJ Rama G. Elluru stayed a reexamination where all claims in the IPR petition were being reexamined and some art in the petition overlapped with art used in rejections in reexamination. IPR2013-00110, paper 10 at 2-3. APJ Elluru noted strict timeline of IPR proceedings and the possibility that an amendment of the claims in the reexamination would disrupt the IPR. The patent owner subsequently requested that the PTAB lift the stay of the reexamination as to the claims that were not included in the IPR petition. Id., paper 11 at 2. APJ Elluru denied the request, but did state that if the patent owner cancelled all claims involved in the IPR, it would lift the stay. Id. at 3.
In Motorola Solutions v. Mobile Scanning Technologies, the patent owner had submitted four references with a request for ex parte reexamination, and the PTO instituted a reexamination based on one of the four references. IPR2013-00093, paper 19 at 2. The petitioner filed a petition for inter partes review based on, inter alia, the one reference that the PTO accepted as a basis for the reexamination and another reference that the PTO had rejected. Id. The petitioner moved to join the reexamination to the IPR before the PTAB instituted an IPR. Id. at 3. APJ Brian J. McNamara denied the request for joinder and instead stayed the reexamination, saying:
The Board recognizes that conducting the above identified reexamination concurrently with an inter partes review will duplicate efforts within the Office and could potentially result in inconsistencies among the proceedings. However, joining the above identified reexamination with the inter partes review could also complicate and delay the inter partes review.
The Board does not ordinarily stay a reexamination proceeding because, in the absence of good cause, reexaminations are conducted with special dispatch. However, any Board decision on whether to institute an inter partes review or a final written decision with respect to the patentability of the challenged claims in the inter partes review will likely simplify the issues in the reexamination.
Id. at 3; see also Id., paper 20.
In SAP Am. v. Versita Development Group, CBM2012-00001, paper 70 (Jun. 11, 2013), APJ Michael P. Tierney denied the patent owner’s request to stay a reexamination of the challenged patent as part of the PTAB’s final decision cancelling the challenged claims. Id. at 34. Presumably there were other claims remaining to consider in the reexamination, because APJ Tierney ordered that a copy of his decision be placed in the reexamination file and “that the Board’s determination on claim construction is binding on the patent owner in the reexamination.” Id. at 35.
In sum, the Board typically will stay pending reexaminations in favor of proceeding the IPR petitions. As with other issues, however, the Board’s decisions are fact-specific and take into account the particular facts of each case. It is critical to make effective arguments and present specific facts and reasons for granting or denying a stay.
