Legislative Update – STRONG Patents Act Takes Aim at IPR and PGR

8797259_s (1)With the new Congress firmly seated and various legislative efforts gaining momentum, another effort to reform patent system is taking its share of the spotlight. In early February, the House of Representatives took the first step with Rep. Bob Goodlatte re-introducing the Innovation Act, the identical patent-reform legislation that overwhelmingly passed the House in 2013.

Not to be outdone, a group of 3 senators has proposed its version of patent reform, including taking direct aim at post-grant review proceedings. In a bill sponsored by Sens. Chris Coons, Dick Durbin, and Mazie Hirono, known as the STRONG Patent Act of 2015, significant changes to post-grant proceedings would be made, including:

INTER PARTES REVIEW:

  1. Claim Construction: The standard for construing claims in post grant proceedings would be changed from “Broadest Reasonable Interpretation” to a construction similar to that performed in a district court, pursuant to the Phillips decision; relatedly, if a court had previously construed a claim limitation, the Board must consider that construction;
  2. Motions to Amend: Removes the requirement that only one motion to amend may be filed and states that, “a motion to amend filed by the patent owner shall be granted if the proposed number of substitute claims is reasonable”;
  3. Burden of Proof: In deference to the presumption of validity of section 282(a), the burden of proof would be changed from “preponderance of the evidence” to “clear and convincing evidence” for claims that had previously been issued; for claims that are amended in the proceeding, the preponderance of the evidence would be the standard applied;
  4. Standing: A petition to institute an IPR could not be filed unless the Petitioner had either been sued for infringement or charged with infringement;
  5. Discovery of Real Party in Interest: Would explicitly allow discovery of evidence to identify the real party-in-interest;
  6. Evidence Supporting Patent Owner Preliminary Response: Would allow a Patent Owner to submit the same type of evidence in the preliminary response that a Petitioner can submit in a Petition; additionally, if a reply is allowed to Petitioner in response to the Patent Owner Preliminary Response, then the Patent Owner would have the opportunity to file a sur-reply;
  7. Coordination with Other Proceedings: No IPR can be instituted if the patent is already subject to reissue or reexamination proceedings;
  8. Composition of the Board: Any judge that participates in the decision to institute trial may not participate in the actual “trial.”

POST GRANT REVIEW:

The provisions for PGR are substantially similar to those set forth above, relative to IPR, except that, for standing, the Petitioner must demonstrate a “reasonable possibility” of being sued for infringement or charged with infringement; or that there is a competitive harm related to the validity of the patent.

MISCELLANEOUS PROVISIONS:

Among the other aspects of the proposed STRONG Patents Act, include:

  1. Ex parte reexamination could not be filed more than one year after the requester has been served with a complaint alleging infringement;
  2. Form 18 of the Federal Rules of Civil Procedure is eliminated;
  3. PTO Fee diversion is ended;
  4. Changes the standard for finding willful infringement to a “preponderance of the evidence” standard;
  5. Ensures that, for contributory or induced infringement, it is not a requirement that the steps of the patented process be practiced by a single entity;
  6. Expands the entities that are considered “institutions of higher education” for purposes of being considered a micro entity;
  7. Expands the Patent Pilot Program to address “special issues raised in patent infringement suits against individuals or small business concerns”; and
  8. Making the “pattern or practice of sending written communications that state or represent that the recipients are or may be infringing,” under certain circumstances, an unfair and deceptive practice under the Federal Trade Commission Act.

Each side to the debate has now set forth its opening offer – it will be interesting to watch the negotiations unfold to see if another major patent reform effort will be successful.

Board Allows New Reexamination Filing to Amend Claims at Issue in Concurrent IPR

New startIt is well settled under the AIA that it’s possible to have concurrent proceedings during an IPR.  In Game Show Network, LLC and Worldwinner.com, Inc. v. John H. Stephenson (IPR2013-00289), the Board addressed a related issue in which Patent Owner was pursuing a concurrent ex parte reexamination during an ongoing IPR proceeding.

Patent Challenger filed a motion to terminate or stay ex parte reexamination of U.S. Pat. No. 6,174,237.  In the reexamination, Patent Owner sought to amend the claims at issue in the instant IPR proceeding.

Patent Challenger had two main arguments in favor of termination.  First, Patent Challenger argued that allowing pursuit of claim amendments in the ex parte reexamination is inconsistent with Congressional intent of the AIA.  Patent Challenger asserted that by pursuing claim amendments in the reexamination rather than in the IPR proceeding, Patent Owner was dodging Congress’s intent to have IPR proceedings be a substitute for litigation in which the parties’ entire patentability dispute could be resolved in a single proceeding.  Patent Challenger also alleged that allowing Patent Owner to amend claims in the concurrent ex parte reexamination would generate inconsistent claim analyses and increase inefficiency, as further litigation and/or more IPR proceedings would result if Patent Owner’s substitute claims were deemed allowable after reexamination.

Secondly, Patent Challenger argued that Patent Owner was only pursuing minor claim amendments and that the proper avenue for doing so was in an IPR proceeding, not in an ex parte reexamination, where major claim amendments are pursued.

Patent Owner argued that it would be greatly prejudiced if the ex parte reexamination was terminated in light of the fact that the deadline to amend claims in the instant IPR had already passed.

The Board agreed with Patent Owner and made three key points:

(1)    Patent Owner was not attempting to thwart Congressional intent.  The AIA has no express language barring ex parte reexamination to amend claims at issue in a concurrent IPR.  Further, it’s clear that the AIA allows the Director to decide if and how concurrent matters proceed during an IPR.

(2)    Board precedent states that strategies outside of IPR are available for amending claims.  Though an ex parte reexamination typically involves major claim amendments, this fact doesn’t restrict any other amendments to claims at issue in an IPR to be made exclusively within said IPR proceeding.

(3)    There is no issue of generating inefficiency, as the Director had not yet acted on Patent Owner’s request for amending claims.

Therefore, the Board ultimately denied Patent Challenger’s motion to terminate the concurrent ex parte reexamination.

47 for 52: Expert Declaration Provides Support for Grant of Inter Partes Review Trial

Mobile phone and tablet with battery chargers in white backgroundExpert testimony played a key role in Motorola successfully forcing three challenged claims of a Mobile Scanning Technologies patent into an IPR trial, in a case styled Motorola Solutions, Inc. v. Mobile Scanning Technologies, Inc. (IPR2013-00093), involving US Patent No. 6,065,880.  Trial was instituted for all three challenged claims based on 5 out of 18 challenge grounds.  Notably, the ‘880 patent was previously involved in a reexamination proceeding, during which the claims at issue were amended.

The ‘880 patent describes an adapter electrically coupled to a PDA. The adapter includes a laser or other light source which emanates a light beam that can be modified into a digital signal to download information to a PDA equipped with a photo detector or used as a presentation pointer. Also, electronic components of the adapter can be integrally incorporated into the PDA, so as to eliminate the need for the adapter.  This single, embedded PDA design is the subject of the challenged claims.

At threshold, the Board addressed three preliminary matters raised by Patent Owner in its Preliminary Response.  First, the Board addressed a defense raised by Patent Owner that the Petition was barred in light of a previous settlement, wherein the Eastern District of Texas retained exclusive jurisdiction over any future action relating to the ‘880 patent.  This issue was addressed in a prior decision by the Board.  In general, the Board found that it was not the right venue to decide if the district court’s order was being complied with.  The requirements for an IPR petition were met, so it was appropriate to move forward.  Patent Owner was instructed to approach the district court to enforce any of that court’s orders.  Second, the Board addressed Patent Owner’s defense that the non-patent references cited in the Petition were not authenticated.  Also, discussed in the earlier order, the Board found that it “will determine the proper weight to accord to the various references at each stage of the proceeding.”  For purposes of this stage, an adequate evidentiary showing had been made.  Third, Patent Owner argued that the IPR is duplicative of the prior reexamination.  The Board held, however, that given that the ongoing reexamination was stayed, that issue was moot.

The Board then moved to a claim construction analysis of disputed terms “PDA” and “microcontroller.”  Turning first to the specification, the Board declined Patent Owner’s efforts to read a synchronization feature or a personal information manager into the definition of “PDA”, finding that the terms were not mentioned in the patent and Patent Owner pointed to no evidence in the prosecution history or other documentary evidence to limit the “PDA” claim term. Without citing evidence, Patent Owner stated that those skilled in the art would recognize that a “microcontroller” is a highly integrated system-on-a-chip and that the term “microcontroller” is not used interchangeably with the term “microprocessor” in the ‘880 patent. However, the specification used both terms and the Board held that there was no distinction between them for the purposes of the claims of the ‘880 patent. Unsurpisingly, given that Patent Owner was unsuccessful in arguing narrower claim constructions, the Board went on to grant trial on all challenged claims.

In finding a likelihood of anticipation of claim 18 by one of the references, the Board relied on the Petitioner’s expert declaration as evidence that components were necessary for a scanner to operate and were inherent in the reference’s disclosure of a bar code processor connected to a microprocessor. Order at 25. Later, the Board relied on evidence from the Petitioner’s expert declaration that an integrated scan engine must have a photo detector positioned to receive light reflected from the bar code an analog-to-digital converter to process the signal and that it was inherent in another reference. Order at 29. Further, the expert declaration was used to establish that the use of visible red lasers in scanners, and the use of a visible laser diode to emit a visible red beam, was well known by the mid-1990s. Order at 34-35. In short, Petitioner’s expert declaration provided significant ammunition to support the Board’s decision.

Patent Owner sought to dissuade the IPR trial by arguing that Petitioner’s sales of mobility products proved non-obviousness, but the Board rejected the argument because Patent Owner did not provide evidence concerning the size and product scope of the relevant market, the Petitioner’s market share, or evidence of a nexus between the Petitioner’s alleged sales and the claimed invention.

In the end, the Board granted trial on all three challenged claims, based on 5 challenge grounds.

32 for 33: PTAB Again Allows Re-Argument of Grounds Denied in Earlier Reexamination

iStock_000019792592XSmallThe PTAB continued its trend of not providing any deference in an inter partes review to previous actions by the Patent Office with respect to a previously-challenged patent in a case styled Vestcom Int’l, Inc. v. Grandville Printing Co. (IPR2013-00031), involving US Pat. No. 8,020,765. Three of the fourteen challenge grounds were granted, with the Board finding the other 11 grounds to be redundant.

The invention of the ‘765 patent relates to a method of printing, distributing, and placing price tags and point-of-purchase signs for use in retail store shelves and displays. According to the ‘765 patent, the invention is particularly useful for “just-in-time” printing, delivery of price tags with minimal lead times, and faster price tag changes at stores – all while reducing labor costs.

As has become its pattern, the Board first construed two key claim limitations.  First, the Board adopted Patent Challenger’s definition for “digital press,” after noting that Patent Owner did not contest the construction.  Second, the Board, sua sponte, construed the term “just-in-time,” finding that its meaning “is not apparent to us.”  Order at 13.  In construing that term, the Board first noted that the ‘765 patent did not contain an explicit or special definition of “just-in-time.”  As such, the Board turned to a dictionary definition, citing to an online resource (xreferplus.com).  Order at 15.

After construing the two claim terms, the Board proceeded to analyze the Patent Owner’s estoppel argument, that Patent Challenger previously filed a request for inter partes reexamination of the ‘765 patent that included 405 proposed grounds of rejection (fourteen of which were identical to those contained in the present petition for inter partes review). In the prior reexamination, the PTO issued a Reexamination Order denying the petition for inter partes reexamination.  Based on this denial, Patent Owner sought a finding that the present petition for inter partes review should be denied.  The Board disagreed.

First, the Board determined that the previously-codified estoppel provisions of inter partes reexamination (35 USC §317(b)) did not apply to inter partes review. Order at 17. Next, the Board determined that the current version of 35 USC §318(a) did not apply because that section only related to final, written decisions based on a petition for inter partes review, not inter partes reexamination. Order at 17-18. Finally, the Board determined that issue preclusion did not apply because the prior Reexamination Order only addressed a different claim not challenged in the present inter partes review and did not include any substantive analysis or draw any conclusions relative to the claims challenged in the present inter partes review, even though those claims were included in the prior request for inter partes reexamination.  That is, because the specific denial of the reexamination petition only applied the art to claim 1, not the claims challenged here, issue preclusion was inappropriate. Order at 18-19. Therefore, the Board held that Patent Challengers were not estopped from presenting identical grounds for unpatentability.

In the end, the Board granted trial on all thee challenged claims based on three obviousness challenge grounds each involving a combination of at least three prior art references. Important to that analysis was the Board’s rejection of Patent Owner’s argument that there was insufficient rationale to combine the references cited by Patent Challenger. In rejecting this argument, the Board noted that Patent Owner did not provide “credible evidence or arguments concerning any technological difficulties” that would prevent the combination.  Order at 24.  Of course, Patent Owner was unable to put forth expert testimony at this stage of the proceeding.

Lastly, the Board denied an argument that secondary considerations militated against a finding of a reasonable likelihood that one or more claims was unpatentable.  Order at 25.  To that end, the Board found that there was no showing of a nexus between the claimed commercial success and the claimed invention.  To establish commercial success, Patent Owner had to show that the success was “directly attributable” to the claimed features.  Further, Patent Owner needed to address whether other factors, including advertising and promotion, contributed to the commercial success.

25 for 26: Inter Partes Review Trial Instituted On All Grounds In Case Involving Prior Denial of Ex Parte Reexamination Request

Research in Motion was again successful in getting all claims of a Multimedia Ideas patent into an inter partes review trial for all challenged grounds, even relying on some prior art and arguments that were unsuccessful in a denial of a prior ex parte reexamination request. The case is styled Research and Motion Corp. and Research and Motion Ltd. v. Multimedia Ideas LLC (IPR2013-00036), involving US Patent No. 6,871,048. The Board granted the IPR trial for all 12 claims based on all 24 obviousness grounds for challenge. There were no challenge grounds based on anticipation.

The invention of the ‘048 patent relates to a mobile communication apparatus (e.g., a cell phone) for carrying out communication through radio waves and an information providing system using the mobile communication apparatus. Users of wireless mobile communication devices often carry, in addition, a portable sound device for playing music or a portable radio receiver for receiving AM/FM broadcasting, etc. It is an object of the invention to combine the functions of these devices so that the user can obtain information of desired content at a desired time without additionally carrying other devices. The dispute between the parties is focused on the meaning of the “stand-by” state, because the claims require reproducing and outputting downloaded data when the apparatus is in a “stand-by” state.

In general, the Board’s decision included several interesting topics, including: 1) consideration of what, if any, effect a prior reexamination decision, involving the same prior art, had on the IPR, 2) whether the pages used in an expert declaration count against the page limit for a petition, and 3) the Board adopted a key claim construction that was even broader than the construction urged by Patent Challenger.

At the outset, the Patent Owner stressed that the Board should carefully consider the prior denial of an ex parte reexamination request for the patent at issue. The Patent Owner further noted that the previous reexamination request was denied after explicitly considering two references with respect to the stand-by state limitation in which the Patent Challenger is relying on in the present IPR. Although the Board stated that consideration by examiners of the same claim feature based on the same prior art certainly should be considered, the patent owner should not expect that the Board necessarily would come to the same conclusion.

[pullquote align=”left|center|right” textalign=”left|center|right” width=”30%”]35 U.S.C. § 325(d) – “In determining whether to institute or order a proceeding under … chapter 31, the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.”[/pullquote]

The Board then made it very clear that the PTAB will not give any deference to previous reexamination decisions, even when considering the same prior art and arguments.  The Board went on to further state that the Patent Owner’s argument that the Patent Challenger failed to explain why the previous denial was incorrect or why it should be reconsidered, was misdirected. “A petition for inter partes review is not a renewed request for patent reexamination, an appeal of a prior decision denying a request for reexamination, or a rehearing request of the prior decision denying a request for reexamination. The petitioner correctly did not present its petition in any one of those ways.”

This view of prior proceedings is, of course, great news for Patent Challengers.  The Board is more than willing to give a fresh look to old arguments.  While this may be seen by Patent Owners as undermining their property rights and adding uncertainty to earlier decisions by the Office, this is simply another reason why inter partes review proceedings have been, and will continue to be, popular with Patent Challengers.

Further, although this case involves argument about a previous denial of an earlier ex parte reexamination request, the Board’s reasoning extends to all prior decisions by the Patent Office, indicating that the Board is more than willing to reconsider prior art references cited in the patent. To that end, it is interesting to note that approximately 2/3 of IPR petitions filed to date have included at least some previously cited prior art references.

Patent Owner also took the position that Patent Challenger’s petition violated the page length limit, arguing that the twenty-nine (29) page expert declaration that was an exhibit to the petition should have added to the forty (40) page petition given that the declaration contains numerous arguments in addition to factual support. The Board declined to accept Patent Owner’s argument on four grounds:  1) Patent Owner did not identify argument portions of the declaration, 2) arguments not included in the petition may not be considered, 3) page limit objections should be raised as soon as possible, and 4) there is no requirement that a supporting declaration only cite to evidence which has already been directly cited in the petition. Order at 8-9. The Board specifically criticized Patent Owner for taking three months to make a procedural page limit objection.

Finally turning to the merits of the case, the Board construed “stand-by” state to mean a state in which the mobile communication device is powered on and ready to transmit or receive data, but is not actively communicating. This was essentially the interpretation urged by Patent Challenger, but Patent Challenger limited the mobile communication device to a cellphone. Interestingly, the Board stated that even Patent Challenger’s construction was too narrow, and “mobile communication apparatus” should apply to other devices beyond cellphones. The Board also noted that  Patent Owner did not take a position on the construction of the term, as well as mentioning that they were aware of the interpretation used during the previous reexamination denial, but did not address those issues any further. Order at 11-12.

In the end, the Board granted all grounds for all claims. Patent Owner beware – even after the Patent Office has had two or more shots at evaluating the validity of your patent, the Board will provide no deference to those earlier determinations.

14 for 15: Another Inter Partes Review Trial Instituted

SONY DSCSuddenly, the 92% rate at which the Patent Office granted petitions seeking inter partes reexamination seems kind of low.  While the standard for initiating an inter partes review is ostensibly higher (reasonable likelihood) than the standard that was required to institute an inter partes reexamination (substantial new question), the rate at which inter partes review trials are being instituted does not reflect any such difference.  The Board instituted the fourteenth out of fifteen trials in Ranbaxy Labs, Ltd. v. Vertex Pharm., Inc. (IPR2013-00024), involving US Patent No. 5,436,989.  The Board initiated this trial based on two of the four proposed grounds and against all twelve of the challenged claims.

The subject matter of the ‘989 patent includes prodrugs of HIV aspartyl protease inhibitors, including pharmaceutical compositions and methods of treatment.  In general, the advantages of the prodrugs of the ‘989 patent included higher aqueous solubility, higher oral bioavailability, and decreased pill burden/increased patient compliance.

The first chemical trial instituted by the Board, Ranbaxy also is an outlier because it is one of the few decisions by the Board instituting a trial wherein claim construction was not a central part of the Board’s decision.  Perhaps the Patent Owner was simply saving a claim construction dispute for later in the proceeding, but the Board remarked that “the terms recited in the claims of the ‘989 Patent do not appear to be in dispute.”  Order at 4.

Instead, the Board’s decision turned on the issue of whether the claimed chemical compound was obvious, and used the test for obviousness in a chemical case articulated in Otsuka Pharma. Co., Ltd. v. Sandoz, Inc., 678 F.3d 1280, 1292 (Fed. Cir. 2012).  More specifically, the correct inquiry was articulated as “whether the prior art would have supplied one of ordinary skill in the art with a reason or motivation to modify a lead compound to make the claimed compound with a reasonable expectation of success.”  Order at 7.

Starting with the “Reason to Modify” prong of the Otsuka test, the Board undertook a detailed analysis of the state of the art at the time the ‘989 patent was filed and determined that a shortcoming of protease inhibitors, low solubility, was well-known in the art. The Board gained this perspective from a review of the art of record in this inter partes review.  Because one of the prior art references taught the addition of a solubilizing group known to improve solubility of a low solubility compound, the Board found sufficient “reason to modify.”

Turning to the “Reasonable Expectation of Success” prong, the Board found that the prior art discloses a prodrug similar to the claimed compound.  Further, the Board cited to the ‘989 patent description to support its finding that there was merely insignificant differences between the prior art and claimed methods.  As such, the Board found that the similar structure and disclosure of similar solubility problems associated with that structure would have provided a reasonable expectation of success in improving solubility using the methods taught in the prior art.  Order at 13.

The Board relied upon Patent Challenger’s expert’s testimony in coming to its conclusions.  It being improper, of course, for Patent Owner to introduce any counter-testimony at this stage, there was no evidence to dispute the expert’s conclusion.  Patent Owner’s day, in that regard, will come.  In any event, the two Otsuka prongs having been met, the Board instituted the trial against all challenged claims.

Finally, it is worth noting an interesting point raised by the Board regarding the qualifications of Patent Challenger’s expert.  Specifically, the Board stated that “Patent Owner had not directed us to any reason to doubt Dr. Fisher’s qualifications to testify as an expert in the field of HIV aspartyl protease inhibitors.”  Order at 6.  The remark is interesting because the Board has previously shown a reluctance to consider evidentiary issues at this stage of the proceeding and because an expert’s qualifications are not among the items listed in the Trial Practice Guide as proper subject of a Patent Owner Preliminary Response.

Grounds in Inter Partes Review Petitions Must Be Specific

The divergence of inter partes review practice and reexamination practice continues to show itself in the PTAB’s rulings. In a series of 8 inter partes review petitions filed by Oracle Corporation against patents owned by Clouding IP, LLC, the Board denied a number of proposed grounds for unpatentability, finding that they were not specific enough.

The Board found that the practice, that is sometimes undertaken in reexamination practice, of generically stating that other prior art combinations may also be used does not meet the requirements of IPR practice. More specifically, the Board found that the petition contained alleged grounds for unpatentability that extend beyond those “specifically identified and particularly discussed” in the petition. Further, the petition contained “unspecified combinations of prior art.”

The Board denied all grounds that were based on these generic allegations, noting that inter partes review was a trial, not reexamination or continued prosecution, and Patent Challenger bears the burden of proof.  As such, Patent Challenger was incorrect in referring to an alleged ground of unpatentabiltiy as a proposed rejection made by the Board.  Instead, it was incumbent on Patent Challenger to identify with particularity the challenged claim, grounds, and evidence, that were being used to meet Patent Challenger’s burden. In short, the requirements of 37 CFR §104 had not been met because vague and general allegations cannot meet the “reasonable likelihood” standard.

While the Board issued 8 separate Orders, because each Order had to specify which grounds from each IPR were being dismissed, the rationale was the same in each and, as such, we include only one exemplary Order HERE.

Reexamination Stays Remain the Norm in Inter Partes Review Practice

The PTAB continues to favor inter partes review proceedings over reexamination practice, staying the fourth and fifth co-pending reexaminations in view of a pending IPR. That makes the Board five-for-five in staying reexaminations, despite its consistent statement, contained in each order, that “[t]he Board will not ordinarily stay a reexamination because, in the absence of good cause, reexaminations are conducted with special dispatch.”

The background of this conflict between reexamination and inter partes review proceedings has been previously discussed (Click on the “Concurrent Proceeding” Category in the drop down menu at right). It is worth noting these additional decisions, however, to provide for a complete record and to account for all the ammunition at the disposal of any party seeking to stay a reexamination proceeding in view of an inter partes review.

Reexamination versus Inter Partes Review – Pro Hac Vice Order Points Out Key Difference

A seemingly innocuous motion for admission pro hac vice turned into a battleground recently that ultimately turned on the differences between inter partes review and reexamination proceedings.  The issues arose in the IPR styled as Avaya Inv. V. Network-1 Security Solutions, Inc. (IPR2013-00071), involving US Patent No. 6,218,930.

The underlying motion for admission pro hac vice, filed by Patent Owner, was standard on its face, if not more detailed than the standard motion of this type.  In general, the attorney that was subject of the motion was Patent Owner’s lead litigation counsel, had significant experience with both the technology at issue and litigation in general.

Patent Challenger opposed the motion on the grounds that the counsel-at-issue was prohibited from participating in the inter partes review in light of two protective orders that were entered in related district court litigation. Specifically, one of those protective orders stated that outside counsel who obtained confidential information “may not act as counsel of record in any reexamination proceeding…”  Arguing that inter partes review was used broadly in that order to encompass all forms of Patent Office proceedings, Patent Challenger sought to keep litigation counsel out of the IPR proceeding.

The Board disagreed with Patent Challenger’s argument, focusing on the differences between inter partes review and reexamination proceedings. For example, the Board pointed out that IPR is an administrative trial that is considered a “contested case” per Patent Office rules.  Order at 5.  Reexaminations, on the other hand, are merely another examination of the claims and are conducted pursuant to the same standards used in initial examination.  Id.  As such, the Board concluded, on the face of the protective order, the prohibition against counsel serving as reexamination counsel does not apply to IPR.

The Board further pointed out that there had been no showing by Patent Challenger that litigation counsel for Patent Owner had violated the protective order, and any suggestion that the order might later be violated is pure speculation.  Additionally, the Board distinguished a Covered Business Method case, in which a risk of trial counsel also acting as post-grant counsel served as the basis to deny a motion seeking admission pro hac vice.  In that case, the district court had found a pattern of protective order violations in the underlying litigation.  There being no such finding by the district court related to the parties to this IPR, the Board’s earlier decision in this regard was distinguishable.

Lastly, on the issue of the overall fitness of litigation counsel to appear in this IPR proceeding, Patent Challenger argued that, since certain prior art and validity issues that are at issue in the inter partes review were not presented in the district court cases handled by litigation counsel, he did not have established familiarity with the subject matter at issue.  The Board did not accept this argument, finding that his litigation experience with this patent and its subject matter were sufficient to meet this threshold of pro hac vice admission.

In the end, this is another example of the Board’s leniency toward allowing non-patent practitioners to participate in inter partes review.  We also gain some insight into the Board’s view of the distinction between inter partes review and inter partes reexamination.

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.