Ex Parte Reexamination Stayed in Favor of Inter Partes Review

In a recent sua sponte order, the PTAB stayed a concurrent ex parte reexamination proceeding after another party filed a petition for inter partes review (IPR) against the same patent. Lumondi Inc. v. Lennon Image Tech., IPR2013-00432, Paper 7 (Aug. 6, 2013). The reexamination request was filed on September 15, 2012 and had already undergone substantial reexamination. The petition for inter partes review was filed almost a year later by a different party on July 10, 2013. Although the petition challenged substantially the same claims as the reexamination request, it raised different grounds of unpatentability based on different prior art.

The Board recognized that the Office does not ordinarily stay reexamination proceedings because they are to be conducted with special dispatch. According to the Board, however, conducting the two proceedings concurrently “would duplicate efforts within the Office and could potentially result in inconsistencies between the proceedings.” The Board provided three justifications for issue the stay. First, it noted that the patent owner could amend the claims in the reexamination proceeding separate from the inter parties review. Second, it emphasized the time constraints that apply to inter partes reviews. And third, it explained that decisions by the Board during the inter partes review may simplify the issues in the reexamination. The fact different parties challenged the claims based on different prior art “did not weigh in favor of concurrent Office proceedings” given the fact that the same claims were challenged in both proceedings.

In two other inter partes reviews, the PTAB denied motions that requested suspension of concurrent ex parte continuation applications under 37 CFR § 42.3. Chi Mei Innolux Corp. v. Semiconductor Energy Lab. Co., Ltd., IPR2013-00028, Paper 8 (Nov. 28, 2012); Chi Mei Innolux Corp. v. Semiconductor Energy Lab. Co., Ltd., IPR2013-00038, Paper 7 (Nov. 28, 2012). Rule 42.3 allows the Board to take exclusive jurisdiction over every involved application and patent during a proceeding. However, the Board explained that an “involved” patent is the patent in the proceeding and an “involved” application is an application subject to a derivation proceeding.

Thus, it seems likely that the PTAB will stay concurrent proceedings that directly relate to the patent actually challenged in the inter partes review, e.g., concurrent reexamination proceedings and perhaps reissue applications. And may similarly do so in post grant reviews and covered business method reviews. But the PTAB probably will not stay or suspend concurrent proceedings that are indirectly related to the challenged patent, e.g., pending ex parte continuation applications.