Filing a Petition for Inter Partes Review or Post-Grant Review Can Stay Other Patent Office Post-Grant Proceedings

August 23, 2013

By: N. Scott Pierce

Hamilton Brook Smith Reynolds Alert

  • Filing of a petition for inter partes review, or post-grant review, under the America Invents Act (AIA) can prompt a stay of ex parte reexamination.

 
The Order
On August 6, 2013, the PTO Patent Trial and Appeal Board (Board) stayed ex parte reexamination of U.S. Patent No. 6,624,843 (the '843 Patent), owned by Lennon Image Technologies LLC (Lennon Image), pending the outcome of an inter partes review of the same patent.  Ex parte reexamination was stayed despite the fact that a decision whether to grant the petition for inter partes review has yet to be made.
 
The Facts
The '843 Patent is directed to an image capture system that creates and stores an image of a customer, and then forms a composite of that image with items available in a store, including online stores.  The customer can then view full motion videos or still images of themselves wearing the items as they pass in close proximity to an image display area or online using a device such as a webcam.

A request for ex parte reexamination of the '843 Patent was granted in 2012 and is still pending.  In March of this year, during reexamination of the '843 Patent, Lennon Image filed suit against Lumondi, Inc. (Lumondi) in the Eastern District of Texas.  Lennon Image has filed an additional dozen suits on the same technology against various companies in the past year, including Bloomingdales and Mattel.  In July of this year, shortly after Lennon Image filed suit, Lumondi filed a petition for inter partes review of the '843 Patent.  The Board has now stayed the ex parte reexamination proceeding pending a decision on the petition for inter partes review.

The Reasoning
The Board found that, because the claims being challenged in the reexamination and in the inter partes review are the same, conducting both proceedings concurrently would duplicate efforts and could potentially result in inconsistencies.  Therefore, as a result, the Board stayed the ex parte reexamination proceeding, at least until a decision is made regarding the petition for inter partes review.

Under the AIA, 35 U.S.C. § 315(d) states that, "during the pendency of an inter partes review, if another proceeding or matter involving the patent is before the Office, the Director may determine the manner in which the inter partes review or other proceeding or matter may proceed, including providing for stay, transfer, consolidation, or termination of any such matter or proceeding."

The Board's decision means that the mere fact of filing a petition for inter partes review is within the scope of "pendency of an inter partes review" under 35 U.S.C. § 315(d).  Similarly, a parallel provision under 35 U.S.C. § 325(d) for post-grant review suggests that the filing of a petition for post-grant review may have the same effect.  Post-grant review, for which a petition can only be granted on a patent filed under the AIA, is not limited, as is ex parte reexamination or even inter partes review, to prior art issues, but can include any grounds (except "best mode") under the statute for finding a lack of patentability or validity.  As a consequence, pending post-grant proceedings may be stayed by the mere filing of a petition for post-grant review or inter partes review by third parties, such as defendants in a lawsuit, and may be consolidated with those other proceedings if the petition is granted.

Implications and Conclusions
As exemplified by the Board's recent ruling in Lumondi v. Lennon Image, filing a petition for post-grant review or inter partes review could result in a stay of ex parte proceedings or consolidation of those proceedings with proceedings initiated by the defendant in a lawsuit, thereby potentially complicating previously-initiated ex parte proceedings with broader, post grant review or inter partes review under the AIA.
 

Overview

August 23, 2013

By: N. Scott Pierce

Hamilton Brook Smith Reynolds Alert

  • Filing of a petition for inter partes review, or post-grant review, under the America Invents Act (AIA) can prompt a stay of ex parte reexamination.

 
The Order
On August 6, 2013, the PTO Patent Trial and Appeal Board (Board) stayed ex parte reexamination of U.S. Patent No. 6,624,843 (the '843 Patent), owned by Lennon Image Technologies LLC (Lennon Image), pending the outcome of an inter partes review of the same patent.  Ex parte reexamination was stayed despite the fact that a decision whether to grant the petition for inter partes review has yet to be made.
 
The Facts
The '843 Patent is directed to an image capture system that creates and stores an image of a customer, and then forms a composite of that image with items available in a store, including online stores.  The customer can then view full motion videos or still images of themselves wearing the items as they pass in close proximity to an image display area or online using a device such as a webcam.

A request for ex parte reexamination of the '843 Patent was granted in 2012 and is still pending.  In March of this year, during reexamination of the '843 Patent, Lennon Image filed suit against Lumondi, Inc. (Lumondi) in the Eastern District of Texas.  Lennon Image has filed an additional dozen suits on the same technology against various companies in the past year, including Bloomingdales and Mattel.  In July of this year, shortly after Lennon Image filed suit, Lumondi filed a petition for inter partes review of the '843 Patent.  The Board has now stayed the ex parte reexamination proceeding pending a decision on the petition for inter partes review.

The Reasoning
The Board found that, because the claims being challenged in the reexamination and in the inter partes review are the same, conducting both proceedings concurrently would duplicate efforts and could potentially result in inconsistencies.  Therefore, as a result, the Board stayed the ex parte reexamination proceeding, at least until a decision is made regarding the petition for inter partes review.

Under the AIA, 35 U.S.C. § 315(d) states that, "during the pendency of an inter partes review, if another proceeding or matter involving the patent is before the Office, the Director may determine the manner in which the inter partes review or other proceeding or matter may proceed, including providing for stay, transfer, consolidation, or termination of any such matter or proceeding."

The Board's decision means that the mere fact of filing a petition for inter partes review is within the scope of "pendency of an inter partes review" under 35 U.S.C. § 315(d).  Similarly, a parallel provision under 35 U.S.C. § 325(d) for post-grant review suggests that the filing of a petition for post-grant review may have the same effect.  Post-grant review, for which a petition can only be granted on a patent filed under the AIA, is not limited, as is ex parte reexamination or even inter partes review, to prior art issues, but can include any grounds (except "best mode") under the statute for finding a lack of patentability or validity.  As a consequence, pending post-grant proceedings may be stayed by the mere filing of a petition for post-grant review or inter partes review by third parties, such as defendants in a lawsuit, and may be consolidated with those other proceedings if the petition is granted.

Implications and Conclusions
As exemplified by the Board's recent ruling in Lumondi v. Lennon Image, filing a petition for post-grant review or inter partes review could result in a stay of ex parte proceedings or consolidation of those proceedings with proceedings initiated by the defendant in a lawsuit, thereby potentially complicating previously-initiated ex parte proceedings with broader, post grant review or inter partes review under the AIA.
 

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