Parallel Inter Partes Review Proceedings

Authored by Michelle Carniaux

As reported in our blog post dated May 2, 2013, one way suggested by the USPTO to deal with the somewhat tight IPR petition page limit is to file multiple IPR petitions directed to different subsets of claims of a patent, rather than to petition for a waiver of the page limit.  The PTAB has now granted three pairs of such petitions.  See IPR2013-00048, -00049, -00052, -00053, -00064 and -00065.  Interestingly, the PTAB has not consolidated the proceedings that relate to the same patent.  Instead, the PTAB issued scheduling orders that coincide with each other so that oral arguments are heard on the same day.  See IPR2012-00048, Paper No. 15, 2 (May 13, 2013).   The possible benefits of allowing the proceedings to move forward in parallel  rather than consolidating the cases include allowing the parties to file less complicated papers (e.g., motions to amend and other papers in each proceeding may address smaller sets of claims within the page limit constraints), and allowing the PTAB to allocate additional time for itself for the proceedings.  It is likely the PTAB will expect the IPR parties to cooperate with each other regarding discovery in the parallel proceedings.  See CBM2012-00004, Paper No. 15 (February 22, 2013).

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