Another Motion to Stay Reexamination Granted in Inter Partes Review

One of the goals of this site is to provide a comprehensive, one-stop-shop, for all “inter partes review” Orders issued by the Board.  While the rationale for staying a pending reexamination in view of an IPR relating to the same patent has been covered in past posts (for example, HERE), for the sake of completeness, we briefly note here that another reexamination proceeding has been stayed in view of an inter partes review.

Specifically, in a pair of Orders issued in Motorola Solutions v. Mobile Scanning Technologies (IPR2013-00093), the Board decided not to join an ex parte reexamination and inter partes review that were directed at the same patent.  Instead, the Board chose to stay the reexamination in view of the IPR.

The motion for joinder was based on a concern by the patent challenger that separate proceedings could result in different claim constructions, examinations based on incomplete information, and inconsistent amendments or arguments made with respect to the patent-in-issue.  While the Board was sympathetic to these concerns, it decided that merging the two proceedings could complicate and delay the inter partes review.

Instead, the Board granted the concurrent motion to stay the ex parte reexamination in view of the IPR.  As has been its practice, the Board gave a nod toward the general rule that it will not ordinarily stay a reexamination in view of an inter partes review.  But, the Board then went on to, again, stay the co-pending reexamination because the decision to institute an IPR, and any final written decision relating thereto, will simplify issues in the reexamination. Only time will tell if the Board actually decides not to stay a co-pending reexamination in view of an IPR.