PTAB Stays Concurrent Inter Partes Reexamination in Favor of IPR of Same Patent

In CBS Interactive Inc. et al. v. Helferich Patent Licensing, LLC, IPR2013-00033 (Nov. 6. 2012) (Paper No. 15), the Board ordered a stay in a concurrent inter partes reexamination proceeding, pending termination or completion of the inter partes review. On October 25, 2012, the petitioners requested inter partes review of U.S. Patent No. 7,155,241 (“the ’241 patent”). An inter partes reexamination of the ’241 patent was pending at the time the petition was filed. The Board noted that, while it ordinarily would not stay a reexamination proceeding, conducting the reexamination concurrently with inter partes review would duplicate efforts within the USPTO and could result in inconsistencies between the proceedings.

The Board pointed to several factors to support its decision. First, the Board noted that while all of the claims being challenged in the IPR proceeding are different than those subject to reexamination, the patentability of the independent claims would be determined in both proceedings. The Board expressed concern that since all of the challenged clams depend from the reexamination claims, any amendment in the reexamination could change the scope of the challenged claims during the IPR. The Board was also persuaded by the fact that the two proceedings share similar grounds of challenge based on the same prior art and that four of the five Petitioners are also the requesters who filed the reexamination request. Noting that the Board is required to make a determination whether to institute an inter partes proceeding within three months of receiving a preliminary response from the Patent Owner under Section 314(b) and issue a final determination within one year of institution under Section 316(a)(11), the Board concluded that any decision by the Board with respect to patentability will likely simplify the issues in the reexamination. Accordingly, the Board exercised its discretion and ordered a stay in the concurrent reexamination proceeding, pending the termination or completion of inter partes review.