`571-272-7822
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`Paper No. 10
`Entered: December 26, 2012
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`AVAYA INC.
`Petitioner
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`v.
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`NETWORK-1 SECURITY SOLUTIONS, INC.
`Patent Owner
`____________
`
`Case IPR2013-00071
`Patent 6,218,930
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`
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`Before Andrew Kellogg, Trial Paralegal
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`.
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`ERRATA
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`PRPS shows Document 9 as Order Staying Reexamination. Therefore, the
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`PDF paper is changed from 8 to 9. The date entered on Order Staying
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`Reexamination is incorrect, the correct date is December 26, 2012, therefore, Order
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`Staying Reexamination reads as follows:
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`Trials@uspto.gov
`571-272-7822
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`Paper No. 9
`Entered: December 26, 2012
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AVAYA INC.
`Petitioner
`
`v.
`
`NETWORK-1 SECURITY SOLUTIONS, INC.
`Patent Owner
`____________
`
`Case IPR2013-00071
`Patent 6,218,930
`
`
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`Before JAMESON LEE, JONI Y. CHANG, and JUSTIN T. ARBES,
`Administrative Patent Judges.
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`ARBES, Administrative Patent Judge.
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`ORDER – STAYING CONCURRENT
`EX PARTE REEXAMINATION – 37 C.F.R. § 42.122(a)
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`The petition for inter partes review of Patent 6,218,930 (the “‘930
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`patent”) in the above proceeding was filed on December 5, 2012. The
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`petition challenges claims 6 and 9 of the ‘930 patent.
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`Case IPR2013-00071
`Patent 6,218,930
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`A request for ex parte reexamination of claims 6, 8, and 9 of the ‘930
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`patent (Reexamination Control No. 90/012,401) was filed on July 20, 2012
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`and granted on September 5, 2012. The reexamination is currently pending.
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`The Board will not ordinarily stay a reexamination because, in the
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`absence of good cause, reexaminations are conducted with special dispatch.
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`See 35 U.S.C § 305. Conducting the reexamination of the ‘930 patent
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`concurrently with the instant proceeding, however, would duplicate efforts
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`within the Office and could potentially result in inconsistencies between the
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`proceedings. Claims 6 and 9 are being challenged in both the reexamination
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`and the instant proceeding. Thus, Patent Owner could amend the claims in
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`the reexamination and change the scope of the challenged claims while the
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`Board is conducting its inter partes review (should a review be instituted).
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`In addition, the Board is required to determine whether to institute an inter
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`partes review within three months after receiving a preliminary response
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`from Patent Owner, or the date on which such a response is due. See 35
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`U.S.C. § 314(b), as amended by the America Invents Act (AIA). The final
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`determination of any review instituted will normally be issued no later than
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`one year from institution. See 35 U.S.C. § 316(a)(11), as amended by the
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`AIA; 37 C.F.R. § 42.100(c). Any Board decision on whether to institute a
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`review or final written decision with respect to the patentability of the
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`challenged claims may simplify the issues in the reexamination (e.g., claim
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`interpretation) as well.
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`Further, while we recognize that the challenge in the instant
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`proceeding is based on different prior art than that presented in the
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`reexamination and was filed by a different party, these facts do not counsel
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`in favor of concurrent Office proceedings given the fact that claims 6 and 9
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`2
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`Case IPR2013-00071
`Patent 6,218,930
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`of the ‘930 patent are being challenged in both proceedings. See Petition,
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`Paper 1 at 5 (“Petitioner was not the real party in interest [for the request for
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`reexamination].”), 7. The possibility exists that if the proceedings are
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`conducted concurrently, the claims could be amended during the
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`reexamination at the same time the Board is conducting its review.
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`Based upon the facts presented in the instant proceeding and in the ex
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`parte reexamination, the Board exercises its discretion under 35 U.S.C. §
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`315(d), as amended by the AIA, and 37 C.F.R. § 42.122(a), and orders that
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`Reexamination Control No. 90/012,401 be stayed pending the termination or
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`completion of the instant proceeding.
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`PETITIONER:
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`Via electronic transmission:
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`Jeffrey D. Sanok
`JSanok@Crowell.com
`Jonathan Lindsay
`JLindsay@Crowell.com
`Crowell & Moring LLP
`Intellectual Property Group
`1001 Pennsylvania Avenue, N.W.
`Washington, DC 20004-2595
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`PATENT OWNER:
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`Via mail:
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`Buchanan, Ingersoll & Rooney PC
`Post Office Box 1404
`Alexandria, VA 22313-1404
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`3
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