The USPTO’s Patent Trial and Appeal Board (PTAB) has discretion to terminate or stay a reexamination, or change the course of an inter partes review (“IPR”), and/or consolidate such proceedings, if both are pending or requested regarding the same patent.
Because both ex parte reexamination and inter partes reexamination have existed longer than IPRs, most such cases currently involve an IPR filed while a reexamination is pending. The IPR usually wins: the PTAB typically, but not always, chooses to stay or dismiss the reexamination, rather than halt or decline to institute the IPR. The exception is where an amendment has been made in the reexamination: in such cases the reexamination may be allowed to proceed, and the IPR is not instituted or dismissed in favor of the petitioner.
For example, the PTAB has stayed a reexamination concurrent with an IPR because of a possibility that a claim amendment could be made in the reexamination which could change the scope of the claims instituted in the IPR, CBS Interactive Inc. et al. v. Helferich Patent Licensing, LLC, IPR2013-00033, Paper No. 15 (P.T.A.B. Nov. 6, 2012); and because of a possibility of duplicative effort and “inconsistencies between the proceedings” where the claims at issue in the reexamination were similar to the claims instituted in the IPR. Google LLC, v. IXI Mobile (R&D) Ltd., IPR2016-01669, Paper No. 21 (P.T.A.B. Oct. 12, 2017).
Similarly, in Kyocera Corp. v. Softview LLC, IPR2013-0004, Paper No. 11, page 2 (P.T.A.B. Dec. 21, 2012), the PTAB dismissed an ex parte reexamination, filed before an IPR, because of the possibility of a claim amendment in the reexamination and the possibility of duplicative effort and inconsistencies.
However, in Intromedic Co. Ltd. v. Given Imaging Ltd., IPR2015-00579, Paper No. 9 (P.T.A.B. Aug. 5, 2015), the PTAB declined to institute an IPR and allowed the long-preexisting inter-partes reexamination to proceed based, in part, by “the fact that the only claim being challenged by Petitioner has been amended in the [inter partes] reexamination” and “the advanced stage of the reexamination involving the same parties”. Specifically, the PTAB reasoned that it would be a waste of resources to evaluate the validity of a claim which was guaranteed to be either amended or cancelled by the reexamination. Id.
Similarly, in M & P Golf, LLC (d/b/a Cool Clubs) v. Max Out Golf, LLC, IPR2016-00784, Paper No. 43, page 3 (P.T.A.B. Aug. 30, 2017), the PTAB chose the reexamination over the IPR, and entered an adverse judgment in the IPR, holding that the patent owner had effectively admitted that the original claims as instituted were not patentable because the patent owner amended the claims in the reexamination after the IPR was instituted. The PTAB reasoned that “any decision as to the patentability of original claims … that [were] at issue in [the IPR] seemingly would be moot and purely advisory” because the claims at issue in the IPR did not have the same scope as the amended reexamination claims. Id. at page 4.
The less likely scenario of a reexamination requested after an IPR petition also exists, and can result in the reexamination being terminated by the PTAB, for example, if the arguments in the reexamination are substantially the same as presented in the IPR. Ariosa Diagnostics, Inc. v. Illumina, Inc., IPR2014-01093, Paper 81, page 13 (P.T.A.B. May 24, 2016); Ex Parte Reexamination Control Numbers 90/013,666, 90/013,667, and 90/013,671.
Even if the PTAB chooses not to stay or terminate a reexamination filed after an IPR, the Central Reexamination Unit (“CRU”, the USPTO division responsible for reexaminations) may itself deny a request for reexamination.
For example, in Game Show Network, LLC et al. v. Stephenson, IPR 2013-00289, Paper No. 31, pages 1-3 (Mar. 21, 2014) the PTAB denied a petitioner’s motion to terminate or stay a concurrent ex parte reexamination where the deadline to amend the claims in the IPR had passed, but the patent owner had requested, in the request for reexamination, to amend the claims which were instituted in the IPR. The PTAB reasoned that just because “the AIA permits Patent Owner to amend claims in an IPR [and], does not, by itself, prohibit Patent Owner from amending its claims by other means”; “the AIA contemplates the possibility of concurrent proceedings, as it gives the Director discretion to determine how the concurrent matters may proceed”; and the Director had not decided whether to grant the reexamination yet. Id. at 3-5.
However, when it came time for the CRU to determine whether to grant the reexamination, the CRU denied the request for reexamination because, while the request for reexamination raised a substantial question of patentability, it did not raise a substantial new question of patentability as required for an ex parte reexamination because the request was based on the same prior art and arguments presented in the IPR. Order Denying Request for Ex Parte Reexamination, Control No. 90/013,146, dated March 21, 2014.
Accordingly, while the PTAB has stated that the “Board ordinarily will not stay a reexamination”, M & P Golf, IPR2016-00784, at Paper No. 33, page 3, there are plenty of cases where a concurrent reexamination has been stayed or dismissed where the claims or arguments presented in both proceedings are similar. Further, the chances of the PTAB choosing to allow an earlier filed reexamination to proceed and either not instituting an IPR or terminating an IPR in favor of the petitioner are high where the patent owner attempts to change the scope of the claims in the reexamination which were instituted in the IPR.