By Sue Gerber and Matt Johnson

Reexamination can be stayed pending IPR proceedings for good cause shown.  The PTAB recently found good cause for a stay had been established when the reexamination proceedings and IPR proceedings had only a single claim in common, but the prior art substantially overlapped and the IPR proceedings were substantially farther along than the reexamination proceedings.  Toshiba Memory Corp. v. Anza Tech., Inc., IPR2018-01597 (PTAB July 10, 2019) (Paper 38).

In that case, approximately one month after the IPR was instituted, a third party requested reexamination of additional claims of the patent-at-issue.  The Patent Owner, with the consent of the Petitioner, requested that the reexamination be stayed pending the outcome of the IPR.  But, in order to obtain a stay, the movant must show good cause.  Fox Factory, Inc. v. SRAM, LLC, Case IPR2017-01440, slip op. 3 (PTAB June 4, 2018) (Paper 32).  In deciding whether good cause exists, the PTAB considers the  Fox Factory factors:

  1. whether the claims challenged in the IPR are the same as or depend directly or indirectly from claims at issue in the reexamination;
  2. whether the same grounds of unpatentability or the same prior art are at issue in both the IPR and the reexamination;
  3. whether simultaneous conduct of the reexamination and IPR will duplicate efforts within the Office;
  4. whether the reexamination and could result in the inconsistent results with the IPR;
  5. whether amending the claim scope in one proceeding would affect claim scope in the other;
  6. the respective timelines and stages of each proceeding;
  7. the statutory deadlines of the reexamination and IPR; and
  8. whether a decision in the IPR would likely simplify issues presented in the reexamination or render it moot.

Toshiba, at 2.

After considering the factors, the PTAB granted the motion.  It explained that staying the reexamination “would serve the interests of economy and avoidance of potentially conflicting determinations” because the IPR and the reexamination had only a single claim in common, the prior art cited in both proceedings substantially overlap, the simultaneous conduct of both proceedings would likely result in wasteful duplication of effort within the Office and create the risk of inconsistent factual determinations and legal conclusions, and the reexamination was at an earlier stage than the IPR (a first Office Action had yet to issue in the reexamination, but the Patent Owner’s response had already been filed in the IPR).  Id. at 3.

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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.