Takeaway: The Board will likely allow concurrent ex parte reexamination and IPR proceedings. However, the CRU will likely find no SNQ if based on same references in the petition for the IPR.

In its Order, the Board denied Petitioner’s Motion to Terminate, or alternatively stay, ex parte reexamination no. 90/013,148, in which Patent Owner had requested to amend the claims at issue in this proceeding. Petitioner argued that Patent Owner’s pursuit of amendments in the ex parte reexamination is inconsistent with Congress’s intent that the IPR tackle all issues at once and is also inconsistent with the Board’s guidance that ex parte reexamination is for structural changes to the claims. The Board was not persuaded by these arguments and instead found that the AIA does not prohibit Patent Owners from amending its claims by other means. Further, it agreed with Patent Owner that its pursuit of amendments in ex parte reexamination is not inconsistent with the guidance in this proceeding, and the Board did not restrict amendment via ex parte reexamination to complete restructuring of claim structure. The Board requested that Patent Owner notify the Board as soon as possible whenever the status of the ex parte reexamination changes.

Game Show Network, LLC and WorldWinner.com, Inc. v. Stephenson, IPR2013-00289
Paper 31: Order on Conduct of the Proceeding
Dated: March 21, 2014
Patent 6,174,237
Before: Sally C. Medley, Kevin F. Turner, and Benjamin M. Wood
Written by: Wood