CBS Interactive, Inc. et al. v. Helferich Patent Licensing, LLC

November 6, 2012

IPR2013-00033 (JYC) (Patent 7,155,241)

[The Board may exercise its discretion and stay reexamination proceedings pending the completion of an IPR regarding related claims of the same patent]

FACTS

Reexamination proceedings concerning different claims of the same patent were pending at the Office at the time this petition for an PR was file with the Board. Some of the petitioners for this IPR were also third-party requestors in the reexamination proceedings.

HOLDING

The Board stayed reexamination proceedings pending the termination or completion of the instant IPR. Reexamination proceedings will not be stayed absent a good cause. In this case, although claims challenged in the present IPR are different from claims being reexamined, some of the challenged claims are dependent on claims subject to reexamination. Further, petitioners here assert some of the same grounds of challenge based on the same prior art as some of the rejections adopted by the Examiner in the reexamination. Thus, a Board’s decision with respect to claims challenged here may simplify reexamination proceedings. For these reasons, the Board exercised its discretion and stayed the reexamination proceedings.

TAKEAWAY

The Board may exercise its discretion and stay reexamination proceedings pending the completion of an IPR regarding related claims of the same patent.

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