A panel at the Patent Trial and Appeal Board (PTAB) recently considered whether to stay an ex parte reexamination proceeding where the patent was also the subject of a parallel inter partes review (IPR).

On September 11 2018, Petitioner filed a petition for IPR of U.S. Patent No. 6,651,864, which is directed to devices and methods for bonding electrical connections. Independent claim 28 was the only claim challenged in the petition. The Board instituted the IPR on March 14, 2019. Approximately one month later, on April 16 2019, a third party requested ex parte reexamination of claims 1, 2, 4, 7 and 28 of the ’864 Patent. After the Board granted the reexamination request, Patent Owner filed a motion to stay the reexamination proceeding pending resolution of the IPR.

In addressing the motion, the Board explained that a party seeking a stay of a reexamination must show there is “good cause” to warrant the stay. In deciding whether “good cause” exists, the Patent Office has recently identified several factors that the Board may consider, including:

1. whether the claims challenged in the IPR are the same as or depend directly or indirectly from claims at issue in the reexamination;
2. whether the same grounds of unpatentability or the same prior art are at issue in both the IPR and the reexamination;
3. whether simultaneous conduct of the reexamination and IPR will duplicate efforts within the Office;
4. whether the reexamination could result in inconsistent results with the IPR;
5. whether amending the claim scope in one proceeding would affect claim scope in the other;
6. the respective timelines and stages of each proceeding;
7. the statutory deadlines of the reexamination and IPR; and
8. whether a decision in the IPR would likely simplify issues presented in the reexamination or render it moot.

See Notice, 84 Fed. Reg. at 16,657 (April 22, 2019).

The Board weighed these factors and granted the motion to stay the reexamination despite there being only one claim (claim 28) in common between the IPR and reexamination proceedings. The Board found that substantial overlap in prior art between the two proceedings favored the stay and expressed concern that moving forward with both proceedings could lead to “wasteful duplication of effort” by the Office, with potentially “inconsistent factual determinations and legal conclusions.” Finally, the Board noted that the reexamination was still at an early stage, and the Patent Office had not issued a first Office Action, whereas the Patent Owner had already submitted its Preliminary Response in the IPR proceeding. Considering the factors in total, the Board concluded there was “good cause” to stay the reexamination until completion of the IPR.

Practice Tip: A party seeking the stay of an ex parte reexamination, where the same patent is being challenged in an IPR, should be prepared to show good cause by addressing the factors enunciated by the Office as meriting consideration in determining such a request.

Toshiba Memory Corp. v. Anza Tech., Inc., IPR2018-01598, Paper 35 (PTAB July 10, 2019)