By: H. Albert Liou  PTAB Allows Patent Owner to Stay its Own Reissue Proceeding

35 U.S.C. § 315(d) and 37 C.F.R. 42.122(a) vest the PTAB with the power to stay, transfer, consolidate, or terminate any matter pending before the U.S. Patent and Trademark Office while an inter partes review involving the same patent is pending.  As mentioned in our previous blog post, petitioners have often relied on these provisions to request and obtain stays of co-pending Patent Office proceedings.

In Stride Rite Children’s Group, LLC v. Shoes by Firebug LLC, however, it was the Patent Owner, not the Petitioner, who sought to stay Patent Owner’s own reissue proceeding, which sought to broaden the original claims’ scope.  Case IPR2017-01810, Paper 16 (PTAB Apr. 24, 2018).  The patent in question, U.S. Patent No. 9,301,574, issued on April 5, 2016.  Even though the PTAB had already instituted inter partes review on January 19, 2018, the Patent Owner filed a reissue proceeding on April 3, 2018, presumably to beat the two-year deadline for filing broadening reissue applications under 35 U.S.C. § 251(d).  The Patent Owner subsequently moved to stay the reissue proceeding on April 24, 2018.

Hearing no objection from the Petitioner, the Board granted the Patent Owner’s motion.  Stride Rite, Case IPR2017-01810, Paper 23 (PTAB Jul. 12, 2018).  The Board found that a stay in this instance satisfied all three rationales identified in Hewlett-Packard Co. v. MCM Portfolio LLC, Case IPR2013-00217, Paper 8 (PTAB May 10, 2013)—avoiding duplicating efforts in the Office, avoiding potentially inconsistent results, and simplifying the issues in a reissue application.  Specifically, the Board stated:

The claims pending in the ’288 reissue application include claims 1–10 for which we have instituted trial in this proceeding. The reissue claims have not been examined, and no Office action has been entered. Conducting examination of the ’288 reissue application concurrently with this proceeding would needlessly duplicate efforts within the Office and could potentially result in inconsistencies between the two proceedings. Also, any final written decision in this inter partes review with respect to the patentability of the challenged claims may simplify the issues in the ’288 reissue application.

Accordingly, the Board stayed the Patent Owner’s reissue proceeding pending termination or completion of the inter partes review. PTAB Allows Patent Owner to Stay its Own Reissue Proceeding

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Albert Liou

Albert Liou focuses his practice on intellectual property law, including PTAB trials, litigation, counseling, and transactions. He is a seasoned patent and trade secret litigator, having representing clients in the software, computing, automotive, chemical, and high-tech industries.