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ARTICLE · 04 JANUARY 2016

Inter Partes Review Is Not For Pending Claims

McDermott Will & Emery
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The challenged patent is directed at a control system for a hybrid car or other vehicle.

United StatesIntellectual Property
Zachary Getzelman
Zachary Getzelman
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Ford Motor Co. v. Signal IP, Inc.

Addressing the issue of the utility of consolidating an inter partes review (IPR) with an ex parte reexamination proceeding, the U.S. Patent and Trademark Office's (PTO) Patent Trial and Appeal Board (PTAB or Board) denied a request to consolidate an IPR and reexamination proceeding, finding inherent tension between the two as well as jurisdictional issues. After reviewing the statutory basis for consolidation and the purpose of IPRs and reexamination proceedings, the Board denied the Petitioner's attempt to inject amended claims pending in a reexamination proceeding, into an IPR proceeding. Ford Motor Co. v. Signal IP, Inc., Case No. IPR 2015-00860 (PTAB, Nov. 17, 2015) (Cocks, APJ).

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