The PTAB has issued its second order regarding the consolidation of related “proceedings” in the two companion Inter Partes Reviews brought by Chi Mei Innolux Corp. (CMI) against two patents owned by Semiconductor Energy Laboratory Co. (IPR2013-00028, IPR2013-00038). In each case, CMI moved to have the PTAB either (1) take jurisdiction over, and suspend prosecution of, an application that claims priority from the patent at issue in the IPR; or (2) review and authorize any further patent filings, claim amendments, etc. More specifically, CMI argued that the pending (or future) applications may be used to present claims that are patentably indistinct from those at issue in the IPR. The Board denied the motion, finding that 37 CFR § 42.3(a) (relating to inter partes review jurisdiction) does not require it to take jurisdiction over the related applications and, further, that the patent examiner is in just as good, if not better, position to review the pending claims vis-à-vis the IPR. As such, it is not necessary for the Board to review any filings or proposed claim amendments in related patent application(s).
[pullquote align=”left|center|right” textalign=”left|center|right” width=”30%”]37 CFR § 42.3(a) – “The Board may exercise exclusive jurisdiction within the Office over every involved application and patent during the proceeding, as the Board may order.”
37 CFR § 42.2 – “Involved means an application, patent, or claim that is subject of the proceeding.”[/pullquote]
More particularly, the Board pointed out that § 42.3(a) states that the Board may exercise exclusive jurisdiction over “involved” patents or applications. But, § 42.2 defines “involved” patent as meaning the patent that is the subject of the proceeding and “involved” application as meaning an application that is subject of a proceeding, such as a derivation proceeding. Order at 2. The pending, or future, application(s) that claim priority to the patent that is subject of the IPR are not “involved” and there is, therefore, no requirement that the Board take jurisdiction over such application(s).
The Board further declined to review and authorize any filings or claim amendments in any current or future patent prosecution matters. Such relief would require the Board to be a “gate keeper” for all papers and CMI did not explain why the Board should take on the gate keeper function. As has become its practice, however, the Board does drop a hint regarding what it may take to convince it to take such action, stating that CMI “has not explained how the claims present in the…application are patentably indistinct from the claims involved in the [subject] patent.” Order at 3. A patent challenger seeking to obtain the relief sought by CMI in these inter partes review proceedings should attempt to make such a showing – providing a detailed account of how the pending claims are patentably indistinct from the claims at issue in the IPR.
The Board also pointed out that the examiner handling the application(s) is in as good of a position to consider the relative scope of the pending and IPR claims. For example, “[i]f the examiner makes a determination that the claims of the application are patentably indistinct from the [subject] patent claims, then the examiner can suspend the application pending the outcome of this proceeding.” Order at 3.
In the end, the Board denied exercising jurisdiction over pending or future patent applications, but did instruct that its ruling be placed in the administrative records of the pending application to put the examiner in that prosecution on notice of the ruling.