Staying a Patent Office Proceeding Pending Inter Partes Review

Authored by Michelle Carniaux and Michael E. Sander

A petition for inter partes review is often filed as part of an on-going dispute between a petitioner and patent owner. Often, the patent that is the subject of a petition for inter partes review may be the same or related to a patent at issue in a district court or International Trade Commission (ITC) action, and/or involved with another U.S. Patent and Trademark Office (USPTO) proceeding. When two or more proceedings concerning the same or similar issues arise, parties to the dispute may consider the tactical advantage of staying one proceeding pending the completion of the other. In addition, courts must consider issues of judicial economy and the potential for inconsistent rulings.

To date, the Patent and Trial Appeal Board (PTAB) has granted every request for a stay of an ex parte reexamination when the same patent is involved in an inter partes review. The America Invents Act authorizes the PTAB to provide for a “stay, transfer, consolidation, or termination” of any other proceeding in the USPTO pending an inter partes review if the proceeding “involve[s]” the same patent. See 35 U.S.C. § 315(d). The PTAB invokes this authority regularly (and in one case even sua sponte) noting that conducting two proceedings concurrently “would duplicate efforts within the USPTO and could potentially result in inconsistencies among the proceedings. Amendment of the claims in the reexamination proceedings could change the scope of the claims challenged in this proceeding while the PTAB is conducting its review.” See IPR2013-00004, Paper No. 11 (P.T.A.B. Dec. 21, 2012); see also IPR2013-00093, No. 19 (P.T.A.B. Jan. 31, 2013) (denying joinder and issuing sua sponte stay).

Some petitioners have attempted to stay patent applications that are continuations of a patent in inter partes review, but they have met less success. See, e.g., IPR2013-00083, Paper No. 8 (P.T.A.B. Mar. 19, 2013). Allowing a continuation patent application to be prosecuted while a patent in the same family is involved in an inter partes review arguably raises the same issues of judicial economy and inconsistent rulings as allowing an ex parte reexamination to proceed, especially if the claim language of the continuation patent application is similar to the claims at issue in inter partes review. However, the PTAB has repeatedly rejected any request to stay the prosecution of a continuation patent application while a parent patent is pending in inter partes review, stating that it is outside their authority to do so: “[T]he PTAB may stay a reexamination proceeding . . . where the involved patent is subject to the reexamination . . . [however,] the PTAB [has no] authority to take jurisdiction over related continuing applications.” Id. at 3 (emphasis in original). Instead, the PTAB leaves the decision to stay the continuation application to the discretion of the examiner prosecuting the application:

[The] concern that the patent owner may circumvent the result of an inter partes review by presenting patentably indistinct claims in other applications is misplaced. . . For each related continuing application, the designated patent examiner is the deciding official who has jurisdiction over that application. The examiner may suspend the application pending the outcomes of these inter partes review proceedings if the examiner determines such an action is appropriate.

See IPR2013-00086, Paper No. 8 at 3 (P.T.A.B. Mar. 19, 2013).

It remains to be seen whether the PTAB will stay other USPTO proceedings pending an inter partes review, such as a reissue proceeding or an interference. If the same patent is “involved” in the inter partes review, then the PTAB will have the authority to stay the other proceeding. However, issuing such a stay will remain in the PTAB’s discretion and a decision to stay one proceeding over another may depend on the particular facts of the case.