Takeaway: The Board will likely grant a motion to stay a co-pending reexamination where a motion to consolidate the reexamination is currently being considered by the Board.

In its Order, the Board granted Petitioner’s motion to stay the co-pending ex partereexamination control no. 90/013,385 (“the ’385 reexamination”) of the ’601 patent “pending the panel’s consideration of Ford’s prior request for authorization to move to consolidate the ’385 reexamination with one of IPR2015-00860 or IPR2015-00861.”

Patent Owner objected to the requested stay, arguing that the ’385 reexamination was “at a final stage, and the Examiner in charge of the reexamination proceeding likely soon will issue a Reexamination Certificate.” A stay, Patent Owner argued, would likely “interfere with the issuance of the Certificate.”

35 U.S.C. § 315(d) and Rule 42.122(a) provide the Board with the authority to stay a reexamination proceeding. In considering Patent Owner’s arguments against the stay, the Board indicated that the argument actually weighs in favor of granting the stay. In this regard, the ’385 reexamination forms the basis of Petitioner’s requested consolidation. The Board’s “consideration of whether to consolidate the ’385 reexamination with one of the involved inter partes review proceedings may be rendered moot should a Reexamination Certificate issue in the ’385 reexamination.”

Accordingly, the Board found it prudent to temporarily stay the ’385 reexamination to provide the Board with time to consider whether the ’385 reexamination should be consolidated with one of the two inter partes review proceedings. All time periods for filing papers in the ’385 reexamination were tolled while the stay remains in place.

Ford Motor Company v. Signal IP, Inc., IPR2015-00860, 00861

Paper 11: Order Staying Ex Parte Re-examination Control No. 90/013,385

Dated: October 1, 2015

Patent: 6,775,601 B2

Before: Josiah C. Cocks, Mitchell G. Weatherly, and Charles J. Boudreau

Written by: Cocks

Related Proceedings: Re-examination Control No. 90/013,385