`Tel: 571-272-7822
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`
`
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`Paper 17
`Entered: April 23, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`WINTEK CORPORATION,
`Petitioner.
`
`v.
`
`TPK TOUCH SOLUTIONS INC.,
`Patent Owner.
`_______________
`
`Case IPR2013-00567
`Case IPR2013-005681
`Patent 8,217,902
`_______________
`
`
`Before JOSIAH C. COCKS, RICHARD E. RICE, and ADAM V. FLOYD,
`Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`
`
`DECISION
`Joint Motion To Stay Ex-Parte Re-examination Control No. 90/012,869
`37 C.F.R. § 42.122(a)
`
`
`
`
`
`1 This Order addresses a matter pertaining to both cases. Therefore, we
`exercise our discretion to issue one Order to be filed in each case. The parties are
`not authorized to use this style heading for any subsequent papers.
`
`
`
`Cases IPR2013-00567; IPR2013-00568
`Patent 8,217,902
`
`
`The parties have filed a “Joint Motion to Stay Ex Parte Reexamination of
`
`U.S. Patent No. 8,217,902.” Paper 9 (IPR2013-00567), Paper 9 (IPR2013-00568)
`
`(“Joint Mot.”). The referenced ex parte reexamination is Control No. 90/012, 869.
`
`Pursuant to 35 U.S.C. § 315(d):
`
`Notwithstanding sections 135(a), 251, and 252, and chapter 30,
`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.
`
`
`See also 37 C.F.R. § 42.122(a). The Board ordinarily will not stay a reexamination
`
`because, in the absence of good cause, reexaminations are conducted with special
`
`dispatch. See 35 U.S.C § 305.
`
`
`
`Here, the parties jointly have moved to stay the pertinent reexamination. As
`
`explained in the motion, each of the inter partes review proceedings IPR2013-
`
`00567 and IPR2013-00568 and the ex parte reexamination 90/012,869 “involve the
`
`same claims and substantially the same prior art, and raise substantially similar
`
`issues.” Joint Mot. 5. The parties also state that conducting the reexamination
`
`separately from the noted inter partes review proceedings may result “in an
`
`inefficient use of Office resources and could produce inconsistent results.” Id. at 6.
`
`Furthermore, the parties observe that the inter partes review proceedings have
`
`progressed currently to a point in which the Board is due to issue a final written
`
`decision by March 11, 2015. To that end, the parties maintain that “[i]t is thus
`
`likely that any final written decision issued by the Board in the IPR2013-00567
`
`and/or IPR2013-00568 proceedings will precede any final decision in [ex parte
`
` 2
`
`
`
`
`
`
`
`Cases IPR2013-00567; IPR2013-00568
`Patent 8,217,902
`
`reexamination control no. 90/012,869].” Id. Any final written decision with
`
`respect to the patentability of the challenged claims may simplify issues raised in
`
`the reexamination.
`
`
`
`Moreover, Patent Owner could amend claims in the reexamination, and,
`
`therefore, change the scope of challenged claims, while the Board is conducting
`
`the inter partes review proceedings. As noted by the parties, any such
`
`amendments in the reexamination proceeding could interfere with the inter partes
`
`review proceedings “by changing or affecting the scope of the claims at issue
`
`before the Board.” Id. at 4-5.
`
`
`
`Based upon facts presented in the instant proceedings, and in the
`
`reexamination, the Board exercises its discretion under 35 U.S.C. § 315(d) and
`
`37 C.F.R. § 42.122(a) to stay the reexamination pending termination or completion
`
`of the instant proceedings. This stay tolls all time periods for responses. During
`
`the stay, no substantive papers may be filed in the reexamination proceeding.
`
`Ministerial papers, such as those updating an attorney of record, however, may be
`
`filed.
`
`
`
`
`
`In consideration of the foregoing, it is, therefore,
`
`ORDERED that ex parte reexamination 90/012,869 is stayed pending the
`
`termination or completion of the instant proceedings.
`
` 3
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`
`
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`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Cases IPR2013-00567; IPR2013-00568
`Patent 8,217,902
`
`
`
`PETITIONER:
`
`Joseph E. Palys
`Naveen Modi
`FINNEGAN, HENDERSON, FARABOW
`GARRETT & DUNNER, L.L.P.
`joseph.palys@finnegan.com
`naveen.modi@finnegan.com
`
`PATENT OWNER:
`
`Joseph J. Richetti
`BRYAN CAVE LLP
`joe.richetti@bryancave.com
`
`David Bilsker
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`davidbilsker@quinnemanuel.com
`
`
`
` 4
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`
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