With the inception of Inter Partes Review, and its pseudo-litigation features, there has been considerable anticipation over how the various new rules will be interpreted by the Patent Trial and Appeals Board. As such, we will be keeping a close eye on all Orders issued by the Board so we can obtain an understanding of how the various rules will be interpreted. Check back often for updates on these various Orders.
One of the first substantive Orders to come out of the PTAB relates to the consolidation of proceedings that are pending before the Patent Office, issued in Inter Partes Review No. IPR2013-00033(JYC), styled as CBS Interactive Inc., et al. v. Helferich Patent Licensing (U.S. Patent No. 7,155,241). In the PTAB’s ruling, using the power granted to it in 35 U.S.C. §315, a concurrent reexamination regarding Helferich’s ‘241 patent was stayed pending the IPR involving the same patent. It is reasonable to conclude that, based on the PTAB’s rationale in the Order, co-pending reexaminations have little chance of proceeding concurrently with Inter Partes Review proceedings, but some background is in order before we review that rationale:
35 U.S.C. §315(d) (introduced in the America Invents Act) granted the Patent Office Director the authority to set rules regarding the manner in which Inter Partes Review or any other proceeding before the Patent Office may proceed, “including providing for stay, transfer, consolidation, or termination of any such matter or proceeding.” The Patent Office promulgated such a rule, in 37 CFR §42.122, stating that the Board may, during the pendency of an Inter Partes Review, enter any appropriate order regarding such an additional matter.
In CBS Interactive, the Board exercised the authority granted by Congress, and articulated in the Inter Partes Review rules, to stay a pending reexamination relating to the ‘241 patent pending the outcome the CBS Interactive IPR. Based on the rationale articulated by the PTAB, it is hard to imagine how many reexamination proceedings can survive a subsequent IPR filing. To that end, the Board gave credence to the fact that it will “ordinarily” not stay a reexamination in light of the requirement that reexamination proceedings be conducted with “special dispatch.” Order at 2. The Board went on, however, to articulate six facts that weighed in favor of staying the reexamination – each of which seemingly will be present in every Inter Partes Review:
1) Even though the claims in the reexamination were not the same as those in the IPR, all independent claims were being reexamined under the same prior art as put forth in the IPR. Id. at 1-2.
2) Four of the five petitioners for IPR are also the third-party requesters who filed the request for reexamination. Id. at 2.
3) Conducting the reexamination concurrently with the IPR would duplicate efforts within the Patent Office. Id.
4) Because each of the claims challenged in the IPR depend from reexamination claims, either directly or indirectly, the scope of the claims in the IPR could change during the review. Id.
5) The patentability of all independent claims of the ‘241 patent would be determined in both proceedings. Id.
6) Because of the short and definite timeframe required of Inter Partes Review proceedings, allowing the IPR to move forward will simplify issues in the reexamination. Id. at 3.
Based on the above facts, the Board decided to exercise its discretion and stayed the reexamination proceeding pending the termination or completion of the CBS Interactive IPR. There is nothing to fault about the PTAB’s reasoning in ordering a stay – for example, there would indeed be considerable duplication of effort if both proceedings were allowed to move forward concurrently and efficiency does dictate a stay. What is unusual about the order is the PTAB’s comment that it will not “ordinarily” stay co-pending proceedings when it is clear that failing to stay co-pending reexaminations would, in most cases, lead to this duplication of effort.
As such, there is at least something in this Board Order that will help both parties to a stay issues – parties opposing a stay can point to the “presumption” articulated by the PTAB that it will not “ordinarily” institute a stay and parties supporting a stay can point to the facts that lead to a stay (many of which will likely be present in any situation that includes co-pending reexamination and IPR proceedings regarding the same patent). In the end, though, we would view as low the likelihood that a reexamination proceeding will move forward concurrently with an Inter Partes Review.