PTAB Institutes IPR Despite Concurrent Ex Parte Reexamination

by | May 1, 2025 | 325(d) issues, Trial Institution

By Levent Herguner and Matt Johnson –

In Thermaltake Technology Co., Ltd. et al v. Chien-Hao Chen et al, IPR2024-01230, Paper 12 (PTAB Feb. 19, 2025), the PTAB granted the institution of inter partes review (“IPR”) while an ex parte reexamination (“EPR”) on the same patent was ongoing. On July 26, 2024, Thermaltake filed a petition for inter partes review concerning patent No. 10,690,336, entitled “[i]llumination fan connectable with at least one illumination fan for a computer.” A third party had filed the EPR for this same patent on July 2, 2024.

In response to Thermaltake’s petition, Patent Owner argued that the PTAB should deny the institution of inter partes review under 35 U.S.C. § 325(d) considering the pending EPR. The PTAB rejected Patent Owner’s argument. The PTAB applied the two-part test developed in Advanced Bionics to determine whether it should deny a petition under 325(d):

(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.

The PTAB cited PTO guidance that “the Board . . . may deny institution under 35 U.S.C. [§] 325(d) of a requested AIA trial proceeding if a parallel Office proceeding, for example, is in a more advanced stage and involves overlapping issues with the proposed AIA trial proceeding”

Based on the facts at hand, the PTAB noted that the co-pending EPR was not in a more advanced stage as it was recently filed. This distinguished it from the decisions Patent Owner cited, as in both cases the co-proceedings were complete or near completion.  See Intromedic Co. v. Given Imaging Ltd., IPR2015-00579, Paper 9 (PTAB Aug. 5, 2015) and Fox Factory, Inc. v. SRAM, LLC, IPR2017-01439, Paper 7 (PTAB Dec. 8, 2017).

The PTAB also noted that the second factor in Advanced Bionics did not weigh in favor of denial because it would be “nonsensical” to ask Petitioner to argue that the Office erred in its preliminary evaluation when Petitioner was making the same arguments before the PTAB.  The PTAB added that the prejudice against the parties weighed against dismissal because a third party filed the EPR, and Petitioner faced a statutory bar if it waited for the review to finish before filing.

Takeaway: This decision reflects that the PTAB may refuse to deny an IPR under 325(d) even if a co-pending reexamination of the same issues is at a similar stage. Practitioners should consider any pending reviews, including the stage of the proceedings and the timing of their filing, when seeking institution.

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Matthew Johnson

Partner at Jones Day
Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Currently co-chairing the Firm's PTAB subpractice and involved in proceedings at the Board since the first day of their availability in September 2012, Matt regularly represents clients as both petitioners and patent owners at the Board. He further works as an advocate for clients in appeals from Board proceedings at the Federal Circuit.