In Cuozzo Speed Techs. v. Lee, __ U.S.__ (2016) (Breyer, J.), the Supreme Court in justification of the PTO’s “broadest reasonable interpretation” standard in IPR proceedings agreed with the USPTO that the possibility of “consolidation” of an IPR with an ex parte reexamination or reissue proceeding under 35 U.S.C. § 315(d) justifies using the same claim construction standard across Agency proceedings. Slip op. 20 (citing 77 Fed. Reg. 48697-48698).
IPR Consolidations to Date, None: The Supreme Court, however, failed to mention that, as pointed out by the petitioner, “[t]he Government has not pointed to a single instance in which the Board has consolidated an IPR with a reexamination or reissue proceeding.” Cuozzo Br. at 44.
A First Possible Consolidation: A pending case, Argentum Pharms. LLC v. Research Corp. Techs., IPR2016-00204 (PTAB), presents an opportunity for the Office to consolidate — for the first time— an IPR with a pending ex parte reexamination of the same patent. The reexamination is Ex Parte Control. No. 90/013709.