The Central Reexamination Unit (“CRU”) appears to be at odds with the Board of Patent Trial and Appeal Board (“PTAB”) with respect to a Patent Owner’s ability to amend or add claims in an ex parte reexamination proceeding filed during an inter partesreview (“IPR”) proceeding.  In Game Show Network, LLC et al. v. Stephenson, IPR 2013-00289 (Paper No. 31), the PTAB denied the Petitioner’s request to terminate an ex parte reexamination (“reexam”) stating that nothing in AIA prohibits Patent Owner from filing a reexam to amend claims at issue in a concurrent IPR.  On the same day as the PTAB decision, the CRU denied the request to institute reexam, expressing that statements from the PTAB appear to be  “contrary to established Office policy.”  See USSN 90/013,148, Decision dated 3/21/2014.

Specifically, the PTAB instituted an IPR of U.S. Patent No. 6,174,237 (“ the ‘237 Patent”) on November 19, 2013, finding that there is a reasonable likelihood that all of the claims of the ‘237 Patent are either anticipated or obvious in view of WO 97/39811 to Walker (“Walker”).  See IPR 2013-00289, Paper No. 8.  Relying on the PTAB guidance, the Patent Owner chose to amend its claims before the CRU in reexam instead of filing a motion to amend during the IPR.  In the reexamination request, the Patent Owner argued that since the standard of institution of an IPR is a more restrictive, higher standard than a reexamination  and since the PTAB has already determined the standard for IPR has been met in this case, the “standard for granting an ex parte reexamination is also met as a matter of law.”  See Request for Ex Parte Reexamination, USSN 90/013,148 at pg. 1.   The Patent Owner presented the Walker rejection directly from the IPR proceeding without any new teaching argument or interpretation in the reexam.  In doing so, the Patent owner cited to the PTAB’s guidance in Idle Free decision holding that a Patent Owner “may file a request for ex parte reexamination, relying on the Board’s conclusion of a petition’s having shown reasonable likelihood of success on certain alleged grounds of unpatentability as raising a substantial new question of unpatentability.”  See Idle Free Systems, Inc. v. Bergstrom, Inc. Case IPR 2012-00027 at pg. 6.

Thereafter, on February 21, 2014, the Petitioner filed a motion to terminate or alternatively stay the ex parte reexamination, arguing that a reexam is contrary to Congressional intent and an “end-run around” of the IPR and would cause “duplicated USPTO effort and inefficiency” and possibility of “inconsistent analysis.”  Paper No. 27 at pg. 4.  Consistent with its Idle Free decision, the Board denied Petitioner’s motion and stated that there is nothing in the AIA that prohibits a Patent Owner from requesting a reexam to amend claims at issue in a concurrent IPR, but to the contrary, the AIA expressly contemplates the possibility of concurrent proceedings and provides discretion to determine how to conduct the concurrent matters.  Paper No. 31. at pg. 3.

The CRU’s decision which issued on the same day as the PTAB’s order is surprising in view of the PTAB prior guidance.  The CRU denied the reexamination stating that while the prior art “presents a substantial question of patentability, the fact that the exact question is currently being considered by the PTAB means that the question cannot be considered new.”  See USSN 90/013,148, Decision dated 3/21/2014 at pg. 4.  The CRU acknowledged the Idle Free decision from the PTAB, but stated that it “appears to be contrary to established Office policy” because unlike the IPR standard, the standard for reexamination requires that the question be new.  Since the same rejection in view of Walker was before the IPR, the CRU said the “new” requirement of the standard for reexamination was not met.  Id. at 6.  The CRU suggested that if Patent Owner were to pursue claims in another type of proceeding, that proceeding appears to be more correctly applied to reissue proceedings, rather than reexamination.

The seemingly inconsistent positions from the PTAB and CRU puts Patent Owners at unrest regarding how to amend claims.  The strict requirements to amend claims coupled with the limited page number requirement in an IPR make other proceedings such as reexamination appealing.  However, due to the CRU’s recent position, a patent owner should strongly consider filing a reissue or alternatively filing a reexamination containing at least one “new” argument or interpretation of the prior art to avoid denial of the request.