Reexaminations Concurrent with IPR, Normally Not Stayed

Scott Daniels | November 27, 2012

When the Patent Office institutes an inter partes review of a patent, should the APJs stay any concurrent proceedings, such as a co-pending reexamination of the same patent?  In CBS Interactive v. Helferich Patent Licensing, IPR2013-00033, APJ Joni Chang answered that ordinarily, reexaminations would not be stayed – “because in the absence of good cause, reexaminations are conducted with special dispatch.”

The answer, however, was different because of the specific facts of in the CBS case.  APJ Chang first acknowledged that there was no overlap of claims between the reexamination and the IPR – only the patent’s independent claims were challenged in the reexamination and only its dependent claims, in the IPR.  On the other hand, there was substantial overlap between the two proceedings: the same grounds for unpatentability were asserted, the same prior art was applied, and four of the five petitioners in the IPR were also requesters in the reexamination.

APJ Chang therefore stayed the reexamination pending completion of the IPR.  She explained that pursuit of co-pending proceedings could give inconsistent results, since it is possible that the Patent Owner would amend the independent claims in reexamination to have the same scope as the dependent claims in IPR.  Further, patentability of all the independent claims in reexamination could be determined on precisely the same grounds as the patentability of the dependent claims in IPR.  Finally, she commented that the IPR would proceed very quickly, so that the reexamination would not be unduly delayed.

Are the APJs sending a message to the country’s trial judges: perhaps for the same reasoning, those judges should look favorably on a motion to stay a patent infringement action, pending completion of an IPR proceeding for the same patent.

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