In Chums, Inc. and Croakies, Inc. v. Cablz, Inc., the PTAB denied Petitioner’s request to file a motion to suspend prosecution of patent applications that were related to the patent that was the subject of the IPR proceeding. IPR 2014-01240, Paper 22 (May 8, 2015).
Petitioner “requested permission to file a motion to suspend prosecution of U.S. Patent Application Nos. 13/660,706 and 14/307,122 (‘the related patent applications’),” alleging “that one or more claims in the related patent applications were patentably indistinct from at least one claim in U.S. Patent No. 8,366,268 (‘the ’268 patent’),” which was the subject of the IPR proceeding.
In support of its request, Petitioner argued that “if certain claims of the ’268 patent are found unpatentable in [the IPR] proceeding, Patent Owner should be estopped from obtaining claims in the related patent applications that are patentably indistinct from those claims under 37 C.F.R. § 42.73(d)(3)(i),” which states, in relevant part, “[a] patent applicant or owner is precluded from taking action inconsistent with the adverse judgment, including obtaining in any patent . . . [a] claim that is not patentably distinct from a finally refused or canceled claim.”
In denying Petitioner’s request, the PTAB noted “that Petitioner’s reference to 37 C.F.R. § 42.73(d)(3)(i) [was] premature, as a final determination regarding the patentability of the claims in the ’268 patent [had] not been made.” Further, the PTAB pointed out that “an inter partes review merely involves a review of the involved patent, rather than a family of patents and patent applications” (emphasis added). Finally, the PTAB indicated that “the Board may stay a reexamination proceeding when the involved patent is subject to reexamination, [but] the Board does not have authority under 35 U.S.C. § 315(d) to stay prosecution of related patent applications.”
Some takeaways from this decision are:
- Because an IPR proceeding involves review of a patent, rather than review of a family of patents and patent applications, the Board does not have authority to stay prosecution of patent applications that are related to a patent that is the subject of an IPR proceeding.
- The Board may stay a reexamination proceeding when the patent that is the subject of the IPR proceeding is also the subject of the reexamination proceeding.