In Telebrands Corp. v. Tinnus Enterprises, LLC, the Board denied Petitioner’s request for authorization to file a motion to suspend prosecution of co-pending patent applications that were continuations of the challenged patent. PGR2015-00018, Paper 62 (Aug. 29, 2016).

In several decisions prior to Telebrands Corp., the Board found that the estoppel provision of 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: (i) A claim that is not patentably distinct from a finally refused or canceled claim,” did not authorize the Board to stay prosecution of co-pending patent applications.

For example, in Chums, Inc. v. Cablz, Inc., Case IPR2014-01240, which we wrote about here, the Board noted that an inter partes review merely involves a review of the involved patent, rather than a family of patents and patent applications. Additionally, in EMC Corp. and VMware, Inc., v. Personal Web Technologies, IPR2013-00083, Paper 12 (March 19, 2013), the Board held that it may stay a reexamination proceeding only in the situation where the involved patent is subject to the reexamination.

These decisions suggest that the estoppel provisions of § 42.73(d)(3)(i) may allow a final written decision in an AIA trial proceeding to impose constraints on prosecution of co-pending patent applications, such as when the challenged patent is the subject of the prosecution-related proceeding, or after a final written decision finally rejecting or cancelling at least one challenged claim, but make clear that any request to impose constraints on prosecution of unchallenged co-pending patents and patent applications prior to the final written decision are premature.

In Telebrands Corp., Petitioner sought to establish the Board’s authority to suspend prosecution of co-pending applications that were continuations of the challenged patent under 37 C.F.R. § 42.3(a) and 37 C.F.R. § 1.103(e). 37 C.F.R. § 42.3(a) states that “The Board may exercise exclusive jurisdiction within the Office over every involved application and patent during the proceeding, as the Board may order,” and 37 C.F.R. § 1.103(e) states that “The Office will notify applicant if the Office suspends action by the Office on an application on its own initiative.” Patent Owner opposed Petitioner’s request, citing several decisions, including the decisions mentioned above, where the Board found that it was not authorized to stay prosecution of unchallenged co-pending patents and patent applications.

In denying Petitioner’s request, the Board found that Petitioner had not persuaded the Board that the co-pending patent applications met the “‘every involved application and patent’ requirement, which triggers [the Board’s] authority under § 42.3(a),” and that Petitioner did not establish that Part 42 of Title 37 incorporates § 1.103(e). Further, the Board noted that Patent Owner cited several Board decisions (e.g., including the two decisions discussed above) to support its position that the Board was not authorized to suspend prosecution of co-pending patent applications, Petitioner was unable to cite to any Board decision granting such relief.