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Chi Mei Innolux Corporation v. Semiconductor Energy Laboratory Co., Ltd.

IPR2013-00028, Paper No. 8, November 28, 2012

Patent No. 6,404,480

[Board will not take jurisdiction from an Examiner of an application for determining “patentably indistinct” claims]


Petitioner Chi Mei InnoIux (“CMI”), in addition to its petition for inter partes review, submitted a request (which the Board treated as a motion) that the Board take jurisdiction over and suspend prosecution of two patent applications that are the progeny of the patent in suit (Paper 8, p. 2). In the alternative, CMI requested that the Board review and authorize any patent application papers or claim changes to the two patent applications prior to submitting such papers to the examiner handling the application. (Paper 8, p. 2). CMI cited 37 CFR § 42.73(d)(3)(i), which precludes a patent owner from obtaining in any patent a claim that is not patentably distinct from a finally refused or canceled claim (Paper 8, p. 2). CMI argued that the Patent Owner may be able to present patentably indistinct claims in pursuing these two patent applications (Paper 8, p. 2).


With respect to the first request, the Board denied petitioner’s motion based on language in 37 CFR § 42.3(a) that provides for the Board’s exclusive jurisdiction over every “involved” application and patent during the proceeding (Paper 8, p. 2-3). The Board argued that “involved” applications refer to applications and patents that are the subject matter of the proceeding, and the two patent applications were not (Paper 8, p. 3). Thus, the Board refused to exercise jurisdiction over the two patent applications and suspend their prosecution (Paper 8, p. 3).

With respect to the second request, the Board refused to grant petitioner’s motion as well (Paper 8, p. 4). The Board stated that CMI not only failed to point out how the claims in the two patent applications are patentably indistinct, but it is unnecessary for the Board to become involved with the two patent applications because the examiners will be able to determine whether the claims of the two patent applications are patentably indistinct from the US ‘480 patent claims in suit (Paper 8, p. 3-4).  The Board stated: “If the examiner makes a determination that the claims of the applications are patentably indistinct from the ‘480 patent claims, then the examiner can suspend the applications pending the outcome of this proceeding”.


The Board’s strict and narrow definition of an “involved” patent or application for the purposes of inter partes review under 37 CFR § 42.2, indicates that the Board is unwilling to accept jurisdiction over patents and applications having some relation to the patent in suit unless they are brought under a separate post-grant review process.