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

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It 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.

Topics:  America Invents Act, Ex Partes Reexamination, Inter Partes Review Proceedings, Patent Litigation, Patents

Published In: Civil Procedure Updates, Intellectual Property Updates

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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