Too Many Cooks in the Kitchen? – PTAB Puts Parallel Reviews By Central Reexam Unit on Hold

By Ben Snitkoff
The regulations implementing Inter Partes Review (“IPR”), as well as Post-Grant Review (“PGR”), allow the Patent Trial and Appeal Board (“Board”) to join or stay certain proceedings by motion or sua sponte. See 37 C.F.R. § 42.122 (IPR), and 37 C.F.R. § 42.222 (PGR). This provision seems to make a good deal of sense in terms of avoiding duplication of effort and possible inconsistent results.

The regulations provide, in part:

(a) Multiple proceedings. Where another matter involving the patent is before the Office, the Board may during the pendency of the inter partes review enter any appropriate order regarding the additional matter including providing for the stay, transfer, consolidation, or termination of any such matter.

To-date, the Board has used its power to stay pending proceedings sparingly. The Board has only twice stayed co-pending reexaminations in favor of an IPR.

In an IPR filed by CB Distributors, Inc., IPR2013-00387, the Board stayed a co-pending inter partes reexamination where the reexamination and IPR were based, at least partially, on the same prior art reference asserted against the same patent. Even though the petitioner in the IPR, and the third-party requester for the reexamination were not the same party, the Board found that there would be duplication of effort if both proceedings were allowed to continue.

In another case, an IPR petition filed by Lumondi Inc., IPR2013-00432, was used as a basis to stay a pending ex parte reexamination filed by a different petitioner, on the basis that the IPR could simplify the issues in the reexamination, and to avoid the issue of claims being amended mid-reexamination, thus changing the IPR. In this case, the IPR and reexamination were not based on the same prior art reference.

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