Takeaway: Petitioners that wish to stay a co-pending reexamination proceeding should request the stay as early as possible. However, even a timely requested stay may not be warranted if prosecution has ended in the reexam.
In its Order, the Board denied Petitioner’s request for authorization to file a Motion to Stay a reexamination proceeding concerning the challenged ‘132 patent. In particular, the Board held that the requested stay of the reexam would not avoid potential inconsistency with the instant IPR proceeding and was not timely.
A Notice of Intent to Issue a Reexamination Certificate (NIRC) had already been mailed in the reexam. Petitioner argued that a stay of the reexam at least until the Board made its decision whether to institute trial in the IPR was warranted because the reexam allegedly used a claim construction inconsistent with the broadest reasonable interpretation. Petitioner argued that allowing the reexam to conclude with a potentially different claim interpretation than in the instant IPR proceeding would allow for inconsistency.
Patent Owner opposed, arguing that the prosecution in the reexam was already closed thereby avoiding inconsistent results and that the request was untimely because Petitioner knew of the reexam when the Petition was filed. In addition, Patent Owner argued that any last minute stay would be prejudicial “as maintaining uncertainty as to the patentability of the issued claims.”
The Board was not persuaded that a stay was warranted in the present case. The Examiner’s decision in the reexam was already publicly known. Therefore, “granting of a stay would not change the publicly disclosed Examiner’s decision and any potential inconsistency with a decision on institution in the instant proceeding would still be evident.” Instead, the Board noted that it would take into consideration the results of the reexam proceeding in deciding whether to institute trial in the IPR. The Board also held that the requested stay was not timely. Rather than waiting for the NIRC to be issued in the reexam, the appropriate time to request the stay was with the filing of the Petition.
Toshiba Corporation v. Intellectual Ventures II LLC, IPR2014-00317
Paper 10: Order on Conduct of the Proceeding
Dated: May 6, 2014
Before: Kevin F. Turner and Trevor M. Jefferson
Written by: Turner
Related Proceeding: Reexamination Proceeding Control No. 90/012,571