Takeaway: A petition for inter partes review will be denied if the challenged claims are amended in ex parte reexamination after the petition is filed but before the Board determines whether to grant the petition.

In its Decision, the Board denied the petition to institute inter partes review of claims 1-29.  Petitioner filed a petition to institute inter partes review of claims 1-29. Before the Board determined whether to grant Petitioner’s request, the Office issued a Reexamination Certificate amended all of the challenged claims. As a result, claims 1-29 of the patent, as challenged in the petition, no longer exist. Accordingly, the Board denied the petition to institute an inter partes review of the claims.

Juniper Networks, Inc. v. Linex Technologies, Inc., IPR2014-00595
Paper 19: Decision Denying Institution of Inter Partes Review
Dated: September 26, 2014
Patent 7,167,503
Before: Trevor M. Jefferson, Michael J. Fitzpatrick, and Jon B. Tornquist
Written by: Jefferson