Concurrent Post Grant Proceedings with the Same Real Party in Interest

One of the more intriguing aspects of the new patentability trials of the America Invents Act (AIA) is their potential interplay with legacy post grant proceedings such as patent reissue, ex parte and inter partes patent reexamination. In formulating the rules to implement the new AIA proceedings, namely, Inter Partes Review (IPR), Post Grant Review (PGR) and the Covered Business Method (CBM) review, the USPTO did not specifically define how conflicting proceedings would be processed. For example, the first half of 35 U.S.C. § 325(d) explains that the Board may provide for the “stay, transfer, consolidation, or termination” of either of the conflicting proceedings. Exactly how those determinations would be made was explained as a “case-by-case basis.”

The first PTAB proceeding to examine such issues is IPR 2013-00033. In this proceeding, CBS Interactive petitioned for IPR of patent 7,155,241, assigned to Helferich Patent Licensing. The petition challenged several of the patent’s dependent claims. Concurrently, an inter partes patent reexamination (95/001,864) is also pending, challenging all the of independent claims in the patent. The IPR and reexamination did not challenge any of the same claims, but the same real party in interest asserted some of the same grounds of unpatentability with respect to the same prior art.  In examining the potential conflict between the proceedings, the PTAB opted to stay the reexamination proceeding pending termination/completion of the Review, explaining:

The Board will not ordinarily stay a reexamination because, in absence of good cause, reexaminations are conducted with special dispatch. Conducting the reexamination concurrently with the instant proceeding, however, would duplicate efforts within the Office and could potentially result in inconsistencies between the proceedings. Notably, since all of the challenged claims are depended from the reexamination claims directly or indirectly, the Patent Owner could amend the independent claims or other claims in the reexamination which in turn could change the scope of the challenged claims while the Board is conducting its review. Further, the patentability of all of the independent claims would be determined in both the instant proceeding and the reexamination based on the same grounds of unpatentability.

In addition, the Board is required to determine whether to institute an inter partes review within 3 months after receiving a preliminary response from the Patent Owner, or the date on which such a response is due (i.e., January 29, 2013). See 35 U.S.C. § 314(b), as amended by the America Invents Act (AIA). The final determination of any review instituted will normally be issued no later than 1 year from institution. See 35 U.S.C. § 316(a)(11), as amended by AIA, and 37 C.F.R. § 42.100(c). Any Board decision on whether to institute a review or final written decision with respect to the patentability of the challenged claims will likely simplify the issues in the reexamination.

(Order here)

As explained above, this case was especially unique due to the segregation of claims in each proceeding. Co-pending proceedings with the same claims and art should be relatively uncommon if the Board rejects those petitions that are directed to issues previously presented to the Office. In this regard, the second half of 35 U.S.C. § 325(d) provides:

In determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, the Director may take into account whether, and reject the petition or request because,the same or substantially the same prior art or arguments previously were presented to the Office.

As noted above, the CBS case was unique as being directed to different claims, otherwise, the petition for IPR would likely be denied pursuant to the the second half of 325(d).

The Board also noted, perhaps because such situations are not expected to be very commonplace, that the interruption of an ongoing patent reexamination will not be typical. Still, in those rare situations where a same real party in interest (challenger) is found in two conflicting post grant proceedings, even if the Board declines to stay the reexamination, the Patentee may be able to seek the same relief elsewhere within the Office.

For example, although unstated in the the Order, IPR is significantly faster than patent reexamination. Indeed, speed was a significant focus of the AIA’s re-invention of the previous inter partes reexamination proceeding. The speed consideration is important because, as here, where the petitioner in the IPR and reexamination are the same real party in interest, the estoppel of the faster IPR proceeding controls. So, win or lose, the co-pending reexamination would be terminated/vacated as a result of the IPR in a mere 12 months from institution. Assuming the Board did not stay the inter partes reexamination in this instance, the patent owner would have reasonable grounds to petition for suspension of the reexamination pending the relatively imminent estoppel result. MPEP 2684.04; Sony Computer Entertainment America Inc. v. Dudas 85 USPQ2d 1594 (E.D. VA 2006). Of course, this petition would not be decided by the Board, but instead, by the Office of Patent Legal Administration (OPLA) Clearly, once a co-pending IPR is ordered, a patent owner faced with fighting the same battle in reexamination, from a same requester, will seemingly be faced with an extraordinary circumstance consistent with 37 C.F.R. § 1.183. And, it would seem the USPTO has better use of their patent reexamination resources.

(Note: There is no petition option for a co-pending ex parte proceeding. This is because there is no such statutory authority to suspend an ex parte patent reexamination. Ethicon Inc., v. Quigg 849 F.2d 1422).