Takeaway: The Board may stay a reissue application that is concurrently pending with a post-grant review of a related patent where efforts within the Office would be duplicated and could potentially result in inconsistencies between the proceedings.
In its Decision, the Board sua sponte stayed a reissue of the ’557 patent pending outcome of the instituted post grant review. Patent Owner had filed previously a reissue application of the ’557 patent, but no Office Action had yet issued. In a related reissue application, however, a non-final action was issued rejecting pending claims “over some of the same grounds and references which are the subject of this post-grant review.”
The Board will not ordinarily stay a reissue application because, in the absence of good cause, reissues are given special status. See MPEP § 1442. Conducting the above identified reissue concurrently with the instant proceeding, however, would duplicate efforts within the Office and could potentially result in inconsistencies between the proceedings. Amendment of the claims in the reissue proceeding could change the scope of the claims challenged in this proceeding while the Board is conducting its review.
The Board thus exercised its discretion and ordered the ’372 reissue application stayed.
American Simmental Assoc. v. Leachman Cattle of Colorado, LLC, PGR2015-00005
Paper 18: Decision Granting Stay of Reissue
Dated: June 25, 2015
Patent: 8,725,557 B2
Before: Phillip J. Kauffman, Michael W. Kim, and Robert J. Weinschenk
Written by: Kim
Related Proceedings: Reissue Application No. 14/516,372; Reissue Application No. 14/516,353