By Allison Haugen and Dave Maiorana

In August 2016, Google petitioned for Inter Partes Review of U.S. Patent No. 7,552,124 (owned by IXI Mobile), asserting that claims 1–10 are unpatentable.  In March 2017, the PTAB instituted the IPR as to claims 1–5, but denied institution for claims 6–10.

In July 2017, while the IPR was still pending, IXI Mobile requested ex parte reexamination for the ’124 patent.  In the reexamination, IXI Mobile argued that the references of record in the IPR raise new questions of patentability as to claims 6–10.  IXI Mobile also added two new claims and argued that they are patentable.  Thus, in the reexamination, claims 6–10 as well as additional claims are under review, but claims 1–5 are not.

Google then argued to the PTAB that the reexamination should be stayed to avoid inconsistencies between the reexamination and the IPR.  Even though the PTAB did not institute the IPR as to claims 6–10, Google contended that those claims are “essentially means plus function versions of claims 1–5 and contain very similar limitations.”  Therefore, Google argued, consideration of claims 6–10 in the reexamination will raise issues similar to those in the IPR.

On October 12, 2017, citing 37 C.F.R. § 42.1(b) and 37 C.F.R. § 42.122(a), the PTAB agreed and found that having two proceedings at the Office involving similar claim limitations and the same prior art occurring at the same time was inconsistent with the “just, speedy, and inexpensive resolution of every proceeding.”  Because “there is significant overlap between this IPR and the Reexam, such that permitting the reexamination to proceed in parallel could duplicate efforts within the Office and potentially result in inconsistencies between the proceedings,” the PTAB stayed the Reexamination until the IPR is terminated or completed.


This decision shows that the PTAB may exercise its discretion to terminate or stay a reexamination involving a patent challenged in an inter partes review if conducting both proceedings concurrently could result in duplicative efforts or inconsistent determinations, even if the claims under review are not the same.

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Dave Maiorana is a trial lawyer with a notable combination of significant experience as a United States Patent and Trademark Office (USPTO) Examiner and more than 25 years litigating complex intellectual property matters. He has represented clients as both plaintiffs and defendants around the country and in the International Trade Commission (ITC). Dave has experience in diverse technology areas, including e-cigarettes, teeth whitening, diapers, fem care, antibodies, self-inflating tires, oxygen concentrators, flash memory, and digital cameras.