Takeaway: A likely inconsistent result between an ex parte reexamination and an inter partes review is an important consideration in whether a stay of the reexamination is warranted.

In its Order, the Board granted Petitioner’s request for a stay of the co-pending ex parte reexamination and did not address Petitioner’s alternative request to consolidate the reexamination.  The Board may stay, transfer, consolidate, or terminate another proceeding or matter involving the same patent before the Office.  However, the Board “ordinarily will not stay a reexamination because, in the absence of good cause, reexaminations are conducted with special dispatch.”

The Board set out the following facts as relevant to its analysis: (1) all of the issued claims of the ‘435 patent, except claim 11 (which was cancelled in the reexam), were the subject of the IPR; (2) every claim required a particular “concentration limitation”; (3) a September 17, 2012 Office Action in the reexam had construed the “concentration limitation” as a functional limitation or intended use that the prior art was capable of and rejected all the claims; (4) on March 10, 2014, the IPR was instituted with a similar interpretation of the “concentration limitation” as in the reexam; (5) a March 28, 2014 Final Office Action in the reexam determined the “concentration limitation” was not merely functional or intended use, but structural, and the prior art did not disclose the limitation; and (6) the March 28 Final Office Action confirmed the original claims and new reexam claims based on the interpretation of the term “concentration limitation.”

Petitioner argued that a stay or consolidation was necessary to avoid inconsistent Office decisions because a reexamination certificate would likely be issued granting new and original claims based on a claim construction inconsistent with that of the Board. Petitioner argued it would be prejudiced by having to defend against new and invalid patent claims when asserted by Patent Owner, and also argued that Patent Owner would not be prejudiced because the claims are likely invalid and the IPR would be ending soon.

Patent Owner opposed, arguing that because it agreed not to amend the issued claims in the reexam, the Board’s final decision would control validity and provide consistency. According to Patent Owner, the mechanism for the new claims is another ex parte reexam when those claims issue, and that any final decision by the Board would be binding on the Central Reexamination Unit in that proceeding.  Patent Owner also noted that the Board’s construction was preliminary in nature, and argued prejudice because it would be deprived of about 1/5 to 1/2 of the term of the forty-three new claims pending in the reexam.

In granting the motion to stay, the Board stated that even though its institution decision is preliminary, the Final Office Action in the reexam makes it more likely that there will be inconsistent decisions in the Office. The Board’s decision to institute was based on a construction at odds with that of the Final Office Action, and it determined that a reasonable likelihood existed that the claims were unpatentable unlike in the Final Office Action.  The Board also noted that it must issue a final decision by March 10, 2014, and that such a decision may simplify issues in the reexam.

GEA Process Engineering, Inc. v. Steuben Foods, Inc., IPR2014-00043
Paper 35: Decision on Petitioner’s Motion to Stay Ex Parte Reexamination Control No. 90/012,135
Dated: May 27, 2014
Patent 6,475,435 B1
Before: Rama G. Elluru, Beverly M. Bunting, and Carl M. DeFranco
Written by: Elluru
Related Proceeding: Ex Parte Reexamination Control No. 90/012,135