`571-272-7822
`
`
`
`Paper No. 10
`Entered: December 26, 2012
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY CORPORATION OF AMERICA; AXIS COMMUNICATIONS AB;
`and AXIS COMMUNICATIONS INC.
`Petitioners
`
`v.
`
`NETWORK-1 SECURITY SOLUTIONS, INC.
`Patent Owner
`____________
`
`Case IPR2013-00092
`Patent 6,218,930
`
`
`Before JAMESON LEE, JONI Y. CHANG, and JUSTIN T. ARBES,
`Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`ORDER – STAYING CONCURRENT
`EX PARTE REEXAMINATION – 37 C.F.R. § 42.122(a)
`The petition for inter partes review of Patent 6,218,930 (the “‘930
`patent”) in the above proceeding was filed on December 19, 2012. The
`petition challenges claims 6, 8, and 9 of the ‘930 patent.
`
`
`
`Case IPR2013-00092
`Patent 6,218,930
`A request for ex parte reexamination of claims 6, 8, and 9 of the ‘930
`patent (Reexamination Control No. 90/012,401) was filed on July 20, 2012
`and granted on September 5, 2012. The reexamination is currently pending.
`The Board will not ordinarily stay a reexamination because, in the
`absence of good cause, reexaminations are conducted with special dispatch.
`See 35 U.S.C § 305. Conducting the reexamination of the ‘930 patent
`concurrently with the instant proceeding, however, would duplicate efforts
`within the Office and could potentially result in inconsistencies between the
`proceedings. Claims 6, 8, and 9 are being challenged in both the
`reexamination and the instant proceeding. Thus, Patent Owner could amend
`the claims in the reexamination and change the scope of the challenged
`claims while the Board is conducting its inter partes review (should a review
`be instituted). In addition, the Board is required to determine whether to
`institute an inter partes review within three months after receiving a
`preliminary response from Patent Owner, or the date on which such a
`response is due. See 35 U.S.C. § 314(b), as amended by the America
`Invents Act (AIA). The final determination of any review instituted will
`normally be issued no later than one year from institution. See 35 U.S.C. §
`316(a)(11), as amended by the AIA; 37 C.F.R. § 42.100(c). Any Board
`decision on whether to institute a review or final written decision with
`respect to the patentability of the challenged claims may simplify the issues
`in the reexamination (e.g., claim interpretation) as well.
`Further, while we recognize that the challenge in the instant
`proceeding is based on different prior art than that presented in the
`reexamination, this fact does not counsel in favor of concurrent Office
`proceedings given the fact that claims 6, 8, and 9 of the ‘930 patent are being
`challenged in both proceedings. See Petition, Paper 8 at 8. The possibility
`
`
`
`2
`
`
`
`Case IPR2013-00092
`Patent 6,218,930
`exists that if the proceedings are conducted concurrently, the claims could be
`amended during the reexamination at the same time the Board is conducting
`its review.
`Based upon the facts presented in the instant proceeding and in the ex
`parte reexamination, the Board exercises its discretion under 35 U.S.C. §
`315(d), as amended by the AIA, and 37 C.F.R. § 42.122(a), and orders that
`Reexamination Control No. 90/012,401 be stayed pending the termination or
`completion of the instant proceeding.
`
`
`
`PETITIONER:
`
`Via electronic transmission:
`
`Lionel M. Lavenue
`lionel.lavenue@finnegan.com
`C. Gregory Gramenopoulos
`gramenoc@finnegan.com
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`Two Freedom Square
`11955 Freedom Drive
`Reston, VA 20190-5675
`
`
`PATENT OWNER:
`
`Via mail:
`
`Buchanan, Ingersoll & Rooney PC
`1737 King Street, Suite 500
`Alexandria, VA 22314-2727
`
`
`
`3
`
`
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