United States: Inter Partes Review Is Not For Pending Claims

Ford Motor Co. v. Signal IP, Inc.

Addressing the issue of the utility of consolidating an inter partes review (IPR) with an ex parte reexamination proceeding, the U.S. Patent and Trademark Office's (PTO) Patent Trial and Appeal Board (PTAB or Board) denied a request to consolidate an IPR and reexamination proceeding, finding inherent tension between the two as well as jurisdictional issues. After reviewing the statutory basis for consolidation and the purpose of IPRs and reexamination proceedings, the Board denied the Petitioner's attempt to inject amended claims pending in a reexamination proceeding, into an IPR proceeding. Ford Motor Co. v. Signal IP, Inc., Case No. IPR 2015-00860 (PTAB, Nov. 17, 2015) (Cocks, APJ).

The challenged patent is directed at a control system for a hybrid car or other vehicle. The petitioner, Ford, filed a motion to consolidate two separate IPRs and a reexamination proceeding. Ford's petition requested the Board exercise its discretion under 35 U.S.C. § 315(d) to combine the three proceedings. The focus of Ford's motion were amended claims pending in the reexamination proceeding that would, at the conclusion of the reexam, become ripe for assertion against it in a related litigation.

In denying the motion, the Board initially pointed out the inherent tension between an IPR and reexamination proceeding. An IPR is adjudicatory in nature, while a reexamination proceeding is simply an examination. Also IPRs are governed by specific and accelerated time periods for consideration and resolution as mandated by Congress. Reexamination proceedings are not subject to similar temporal restrictions. These procedural differences discourage consolidation.

The Board further pointed to the facts of the motion to show this was especially an inappropriate instance for consolidation. All of the claims at issue in the IPRs had been disclaimed or would be cancelled upon the issuance of the reexamination certificate. Although the reexamination proceeding was stayed, once the IPR was complete the stay would be lifted and the reexamination proceeding could then resume, providing the patent owner the opportunity to quickly resolve (in the reexamination) all disclaimed and cancelled claims involved in the IPRs without disturbing the IPR schedule. This would be in line with the Board's goal of a just, speedy and inexpensive resolution of the proceedings.

Importantly, the Board recognized that Ford's particular concern in its request for consolidation were new claims that had been added via amendment during the reexamination proceedings, claims that could be asserted against Ford in the pending litigation. Ford argued it would not be able to challenge them through IPR. However, the Board rejected this argument as a basis for granting the motion as the scenario was only a hypothetical at the time and there remained other forums for a party to challenge the patentability of amended claims in a reexam.

Further, the Board pointed out the new claims Ford sought to challenge were not yet patent claims and that, under § 311(b), IPRs can only be used to challenge issued claims. Therefore, amended claims pending in a reexamination were not within the scope of this statute. Similarly, the Board found that Ford provided no explanation as to how § 315(d), which is directed to proposed amendments to claims during an IPR, provided jurisdiction to evaluate amended claims pending in a reexamination proceedings.

Inter Partes Review Is Not for Pending Claims

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