Trials@uspto.gov
`571-272-7822
`
`Paper 27
`Date: February 27, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CISCO SYSTEMS, INC.,
`Petitioner,
`v.
`ORCKIT CORPORATION,
`Patent Owner.
`
`IPR2023-00554
`Patent 10,652,111 B2
`
`
`
`
`
`
`
`
`
`Before KRISTEN L. DROESCH, NATHAN A. ENGELS, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`DOUGAL, Administrative Patent Judge.
`
`ORDER
`Granting Stay of Reexamination
`35 U.S.C. § 315(d)
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 27
`Date: February 27, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CISCO SYSTEMS, INC.,
`Petitioner,
`v.
`ORCKIT CORPORATION,
`Patent Owner.
`
`IPR2023-00554
`Patent 10,652,111 B2
`
`
`
`
`
`
`
`
`
`Before KRISTEN L. DROESCH, NATHAN A. ENGELS, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`DOUGAL, Administrative Patent Judge.
`
`ORDER
`Granting Stay of Reexamination
`35 U.S.C. § 315(d)
`
`
`
`
`
`
`
`
`
`IPR2023-00554
`Patent 10,652,111 B2
`
`INTRODUCTION
`I.
`With our authorization, Patent Owner filed a Motion to Stay Ex Parte
`Reexamination No. 90/015,261 of U.S. Patent 10,652,111 B2 in view of the
`presently instituted inter partes review of the same patent. Paper 20
`(“Motion” or “Mot.”). We instituted review in September 2023. Paper 8.
`Petitioner filed an Opposition to the Motion. Paper 24 (“Opp.”).
`For the reasons discussed below, we determine that it is appropriate to
`stay the ’261 Reexamination, pending resolution of the instant IPR.
`
`
`II. LEGAL STANDARDS
`The Board may enter an order staying a reexamination proceeding. 37
`C.F.R. § 42.122(a); see also 35 U.S.C. § 315(d); 37 C.F.R. § 42.3(a) “[T]he
`Board ordinarily will stay a [reexamination] where good cause exists.”
`Notice Regarding Options for Amendments by Patent Owner Through
`Reissue or Reexamination During a Pending AIA Trial Proceeding, 84 Fed.
`Reg. 16654, 16,656 (Apr. 22, 2019) (“Notice”). “Good cause for staying a
`case may exist if, for example, an on-going [IPR] proceeding, which is
`subject to statutory deadlines, is addressing the same or overlapping claims
`of a patent at issue in [the reexamination].” Id.
`The Board may consider several factors when deciding whether to
`stay a reexamination, including:
`1. whether the claims challenged in the IPR are the same as or
`depend directly or indirectly from claims at issue in the
`reexamination;
`2. whether the same grounds of unpatentability or the same prior
`art are at issue in both the IPR and the reexamination;
`3. whether simultaneous conducting the reexamination and IPR
`will duplicate efforts within the Office;
`
`2
`
`
`
`IPR2023-00554
`Patent 10,652,111 B2
`4. whether the reexamination could result in inconsistent results
`between proceedings;
`5. whether amending the claim scope in one proceeding would
`affect the claim scope in another proceeding;
`6. the respective timeline and stage of each proceeding;
`7. the statutory deadlines of the reexamination and IPR; and
`8. whether a decision in one proceeding would likely simplify
`issues in the concurrent parallel Office proceeding or render it
`moot.
`See id. at 16,657.
`
`III. ANALYSIS
`We now analyze the facts in view of the above factors.
`1. Challenged Claims
`On October 18, 2023 a request for ex parte reexamination of claims
`1–54 of the ’111 patent was granted. Ex. 1014, 3–4. The Petition in the
`present IPR challenges claims 1–9, 12–24 and 27–31. Pet. 1.
`Claims 10, 11, 25, and 26 all depend from claims challenged in the
`Petition. Ex. 1001, 11:45–54, 12:46–50. Claim 32 is an independent claim
`and claims 33–54 depend therefrom. Id. at 13:8–14:60.
`As the Reexamination includes all of the claims involved in the IPR,
`and only one other independent claim, this weighs in favor of a stay.
`2. Grounds
`The Parties both agree that the grounds in the Reexamination and IPR
`are different. Mot. 4–5; Opp. 5; see also Ex. 1014, 15–16 (Action granting
`reexamination determining that that the prior art and arguments presented in
`the request for ex parte reexamination are not the same as those in the
`present IPR). This weighs against a stay.
`
`3
`
`
`
`IPR2023-00554
`Patent 10,652,111 B2
`3. Duplicative Effort
`Because both cases are in the early stages, it is difficult to determine
`to what extent there would be duplication of effort between the two cases. It
`is clearly possible that there could be issues relevant to both cases, even with
`the different grounds, such as claim construction. However, this would be
`largely speculative. Thus, other than the overlap in claims which has already
`been considered above, this factor is negligible.
`4. Amendments
`Petitioner acknowledges that Patent Owner may yet attempt to amend
`the claims in the reexamination. Opp. 8–9. Such an amendment in the
`reexamination would affect the claim scope in the IPR. Accordingly, this
`factor favors a stay.
`5, 6. Timeline and Statutory Deadlines
`The Reexamination is still at an early stage with no office action yet
`entered. Opp. 9. The IPR is somewhat further advanced because Patent
`Owner’s Response (Paper 22) has been filed and the parties have been
`conducting discovery (see e.g., Paper 17). If requested, oral argument in the
`IPR will be conducted on July 9, 2024. Paper 9, 11.
`Applying the Board’s deadlines under 35 U.S.C. § 316(a)(11), we
`expect to issue a final written decision on the IPR on or before September
`20, 2024. Although reexaminations are conducted with “special dispatch,”
`they are not subject to specific deadlines. 35 U.S.C. § 305.
`We find that these factors favor a stay.
`7. Simplification
`A final determination in this IPR regarding the patentability of the
`challenged claims of the ’111 patent could simplify issues for the
`Reexamination given the substantial overlap in the claims at issue.
`
`4
`
`
`
`IPR2023-00554
`Patent 10,652,111 B2
`Conversely, the issuance of a reexamination certificate in the
`Reexamination before a final decision in this proceeding could simplify or
`render moot this proceeding. See M&P Golf, LLC v. Max Out Golf, LLC,
`IPR2016-00784, Paper 43 (PTAB Aug. 30, 2017) (Final Written Decision)
`(entering judgment against Patent Owner as to original claims when Patent
`Owner amended each of those claims in a reexamination, and the
`reexamination certificate had issued). However, considering the current
`stages of the proceedings and the ordinary timeline for reexaminations, that
`eventuality is unlikely.
`This factor favors a stay.
`
`
`IV. CONCLUSION
`Altogether, we find that the above factors weigh in favor of staying
`the Reexamination. For the reasons discussed above, we grant Patent
`Owner’s motion to stay the Reexamination.
`
`
`V. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that, Patent Owner’s motion to stay Ex Parte
`Reexamination No. 90/015,261 is granted; and
`FURTHER ORDERED that the Reexamination is stayed pending
`termination of IPR2023-00554;
`FURTHER ORDERED that this stay tolls all time periods for filing
`further papers in the Reexamination, and no further papers will be filed or
`issued from the Office while this stay remains in place.
`
`
`
`5
`
`
`
`IPR2023-00554
`Patent 10,652,111 B2
`PETITIONER:
`
`Jeffrey Blake
`jblake@merchantgould.com
`Andrew J. Lagatta
`alagatta@merchantgould.com
`
`
`PATENT OWNER:
`
`James Carmichael
`jim@carmichaelip.com
`Stephen McBride
`stevemcbride@carmichaelip.com
`
`6
`
`
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