Takeaway: The Board lifted the stay of a co-pending ex parte reexamination after the conclusion of the IPR proceeding where the Patent Owner agreed not to amend the original claims considered during the IPR proceeding.

In its Order, the Board lifted the stay of ex parte reexamination Control No. 90/011,935 involving the ’040 patent during a teleconference. In an Order dated April 3, 2013, the Board had ordered a stay in the co-pending ex partereexamination that included original claims 1-22 and newly added dependent claims 23-63. In this IPR proceeding on June 20, 2014, the Board concluded that Petitioner had shown by a preponderance of the evidence that claims 8, 9, 11, 12, 14, 15, and 19-22 of the ’040 patent were unpatentable. Thus, Patent Owner requested the Board to lift the stay.

During the call, Patent Owner stated that while the reexamination involves unamended original claims 1-22 considered by the Board in this IPR proceeding, it also involved dependent claims 23-63 which are narrower in scope than the original claims. Further, the Patent Owner agreed not to amend original claims 1-22 going forward in the reexamination proceeding, if the stay is lifted. Patent Owner also explained that the ’040 patent is set to expire in January 2017, and that it would like to reach resolution of the reexamination while the patent still has patent term. Based on the reasons and agreements by Patent Owner, the Board was persuaded to lift the stay of the co-pending ex parte reexamination.

Gnosis S.P.A., Gnosis Bioresearch S.A., and Gnosis U.S.A., Inc. v. Merck & Cie, IPR2013-00117
Paper 74: Order Lifting Stay of Concurrent Reexamination
Dated: February 5, 2015
Patent 6,011,040
Before: Michael P. Tierney, Jacqueline Wright Bonilla, and Scott E. Kamholz
Written by: Bonilla