Paper 31
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` Entered: March 21, 2014
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`
`
`
`Trials@uspto.gov
`Tel: 571-272-7822
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`GAME SHOW NETWORK, LLC and WORLDWINNER.COM, INC.
`Petitioners
`
`v.
`
`JOHN H. STEPHENSON
`Patent Owner
`
`
`
`Case IPR2013-00289
`Patent 6,174,237
`_______________
`
`
`
`Before SALLY C. MEDLEY, KEVIN F. TURNER, and
`BENJAMIN D. M. WOOD, Administrative Patent Judges.
`
`WOOD, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`By Order entered February 18, 2014 (Paper 24), the Board authorized
`Petitioner to file a motion to terminate, or alternatively stay, ex parte
`reexamination no. 90/013,148, which Patent Owner had requested to amend the
`
`

`
`IPR2013-00289
`Patent 6,174,237
`
`claims at issue in this proceeding. Ex. 1009 at 2. Petitioner filed its motion on
`February 21, 2014. Paper 27. Patent Owner filed an opposition to the motion on
`March 5, 2014 (Paper 29), and Petitioner replied in support of the motion on
`March 12, 2014 (Paper 30).
`In their motion Petitioner asserts, first, that Patent Owner’s pursuit of the
`amendments in the ex parte reexamination is inconsistent with Congress’ intent
`that inter partes review (“IPR”) be an effective substitute for litigation. Mot. 2.
`Petitioner argues that in passing the America Invents Act (“AIA”), Congress
`intended that the parties’ entire patentability dispute, including the patentability of
`substitute claims, be resolved in a single IPR. Id. at 1. According to Petitioner,
`permitting Patent Owner’s “end-run around” the IPR would cause “duplicated
`USPTO effort and inefficiency” and the possibility of “inconsistent analyses”
`between the Board and the Central Reexamination Unit (“CRU”), because they
`would be applying the same prior art to “nearly identical claims and patentability
`issues.” Id. at 4. Petitioner further asserts that if the CRU finds the substitute
`claims to be patentable, Petitioner would likely file a second IPR, which could
`have been avoided if Patent Owner had pursued the substitute claims in this
`proceeding. Id.
`Second, Petitioner argues that Patent Owner’s pursuit of substitute claims in
`the ex parte reexamination is inconsistent with the Panel’s guidance. Id. at 3.
`According to Petitioner, “the Panel indicated that a ‘complete remodeling of []
`claim structure according to a different strategy’ may be pursued in ex parte
`reexamination, [but] this IPR is the proper proceeding for minor claim
`
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`2
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`IPR2013-00289
`Patent 6,174,237
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`amendments,” such as those sought by Patent Owner. Id.
`Although Petitioner styled their motion as one to “terminate, or to
`alternatively stay” the ex parte reexamination, Petitioner urges us to terminate the
`ex parte reexamination to stop Patent Owner’s “end-run of the IPR process.” Id.
`at 5.
`
`Patent Owner opposes Petitioner’s motion. Patent Owner argues, inter alia,
`that amending its claims in an ex parte reexamination is consistent with the
`Board’s guidance; that it would be greatly prejudiced if its ex parte reexamination
`is terminated given that the deadline for moving to amend in this IPR has passed;
`and that any action now is premature given that its request has not yet been acted
`upon. Opp. 1-5. Petitioner’s reply in support of its motion largely repeats
`arguments made in the motion. Reply 1-2.
`We deny Petitioner’s motion. First, we are not persuaded that permitting the
`ex parte reexamination to go forward would be contrary to Congressional intent.
`Petitioner has not pointed us to any express statement in the AIA that prohibits a
`patent owner from requesting an ex parte reexamination to amend claims at issue
`in a concurrent IPR. That the AIA permits Patent Owner to amend claims in an
`IPR1 does not, by itself, prohibit Patent Owner from amending its claims by other
`means. Moreover, the AIA contemplates the possibility of concurrent proceedings,
`as it gives the Director discretion to determine how the concurrent matters may
`proceed.
`Second, we agree with Patent Owner that its pursuit of amendments in an ex
`
`1 35 U.S.C. § 316(d).
`
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`IPR2013-00289
`Patent 6,174,237
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`parte reexamination is not inconsistent with our guidance in this proceeding. In
`response to an inquiry whether Patent Owner may file a request for reexamination
`or reissue of the involved patent, we “directed [the parties’] attention to prior
`Board decisions which suggest that a Patent Owner may pursue new claims in
`another type of proceeding before the Office during the trial.” Paper 21 at 2. We
`quoted one prior Board decision as explaining:
`If a patent owner desires a complete remodeling of its claim structure
`according to a different strategy, it may do so in another type of
`proceeding before the Office. For instance, a patent owner may file a
`request for ex parte reexamination, relying on the Board’s conclusion
`of a petitioner’s having shown reasonably likelihood of success on
`certain grounds of unpatentability as raising a substantial new
`question of unpatentability.
`Id. (quoting Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2013-00027, Paper 26 (June
`11, 2013)). To say that a Patent Owner may request an ex parte reexamination to
`obtain “a complete remodeling of its claim structure” does not mean, as Petitioner
`contends, that any other form of amendment to claims challenged in an IPR must
`be obtained within the IPR.2
`
`2 We decline the parties’ invitation to decide whether the proposed
`amendments represent a “complete remodeling” of Patent Owner’s claim structure,
`as Patent Owner contends, or whether they are “minor,” as Petitioner contends.
`We note, however, that Patent Owner’s right to amend the challenged claims in an
`ex parte reexamination is not unlimited. Our rules preclude patent owner from
`taking action inconsistent with an adverse judgment in this IPR, including
`obtaining a claim that is not “patentability distinct” from a claim that is canceled in
`this proceeding. 37 C.F.R. § 42.73(d)(3)(i). We take no position on whether
`Patent Owner’s amended claims presented in its reexamination request are
`patentably distinct from the original claims.
`4
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`IPR2013-00289
`Patent 6,174,237
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`Finally, Petitioner’s concern about duplication of effort and inefficient use
`of Board resources is premature, as the Director has not yet acted on Patent
`Owner’s request. Based on the facts of this proceeding, however, we would want
`to be apprised of any action taken in the reexamination proceeding. Accordingly,
`we direct Patent Owner to notify the Board, as soon as possible, whenever the
`status of the ex parte reexamination changes.
`In consideration of the above, it is
`ORDERED that Petitioner’s motion to terminate, or to alternatively stay, ex
`parte reexamination no. 90/013,148 is DENIED; and it is
`FURTHER ORDERED that Patent Owner shall, when there is something to
`report, file with the Board a status update of the reexamination proceeding.
`
`
`
`5
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`

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`IPR2013-00289
`Patent 6,174,237
`
`PETITIONER:
`
`Brenton R. Babcock
`Ted M. Cannon
`Knobbe Martens Olson & Bear, LLP
`Brent.babcock@knobbe.com
`Ted.cannon@knobbe.com
`boxgsn@knobbe.com
`2BRB@knobbe.com
`2tmc@knobbe.com
`
`PATENT OWNER:
`
`Daniel W. McDonald
`Thomas Leach
`Robert A Kalinsky
`Merchant & Gould, P.C.
`dmcdonald@merchantgould.com
`stephensonIPR@merchantgould.com
`tleach@merchantgould.com
`rkalinsky@merchantgould.com
`
`
`
`
`
`6