Tagged with ex parte

Recent PTAB Decisions Further Illuminate Denial of Review Under 35 U.S.C. § 325(D)

Authors: Kevin J. Spinella
Editor: Aaron J. Capron

Recently, the Patent Trial and Appeal Board (“PTAB”) denied grounds in petitions under 35 U.S.C. § 325(d) because the prior art and arguments relied on in the petitions were substantially similar to those presented during prosecution of the patents at issue.

For example, in Kayak Software Corp. v. IBM Corp. CBM2016-0075, Paper 16 (Dec. 15, 2016), the PTAB declined to institute a covered business method (CBM) petition under § 325(d).

In their Petition, the Petitioners used the exact combination of references that had been applied by the USPTO Examiner. The Petitioners also introduced a new reference not previously cited during prosecution as an additional means to demonstrate the unpatentability of U.S. Patent No. 7,072,849. Continue reading

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Ex Parte Reexamination Stayed in Favor of Inter Partes Review

Author: Timothy P. McAnulty
Editor: Anthony C. Tridico, Ph.D.

In a recent sua sponte order, the PTAB stayed a concurrent ex parte reexamination proceeding after another party filed a petition for inter partes review (IPR) against the same patent. Lumondi Inc. v. Lennon Image Tech., IPR2013-00432, Paper 7 (Aug. 6, 2013). The reexamination request was filed on September 15, 2012 and had already undergone substantial reexamination. The petition for inter partes review was filed almost a year later by a different party on July 10, 2013. Although the petition challenged substantially the same claims as the reexamination request, it raised different grounds of unpatentability based on different prior art.

The Board recognized that the Office does not ordinarily stay reexamination proceedings because they are to be conducted with special dispatch. According to the Board, however, conducting the two proceedings concurrently “would duplicate efforts within the Office and could potentially result in inconsistencies between the proceedings.” The Board provided three justifications for issue the stay. First, it noted that the patent owner could amend the claims in the reexamination proceeding separate from the inter parties review. Second, it emphasized the time constraints that apply to inter partes reviews. And third, it explained that decisions by the Board during the inter partes review may simplify the issues in the reexamination. The fact different parties challenged the claims based on different prior art “did not weigh in favor of concurrent Office proceedings” given the fact that the same claims were challenged in both proceedings.

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