Trials@uspto.gov
`Tel: 571-272-7822
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`
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`
`
`
`
`
`
`
` Paper 8
`
`
`Entered: November, 28 2012
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`CHI MEI INNOLUX CORPORATION
`Petitioner
`
`v.
`
`Patent of SEMICONDUCTOR ENERGY
`LABORATORY CO., LTD.1
`Patent OWNER
`_______________
`
`Case IPR2013-00028
`Patent 6,404,480
`_______________
`
`
`
`Before SALLY C. MEDLEY, KARL D. EASTHOM, and JEFFREY B.
`ROBERTSON, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`DECISION – CMI Motion – 37 C.F.R. § 42.3(a)
`
`
`
`
`
`1 A paper has been filed on behalf of the patent owner indicating that the
`owner of the patent is Semiconductor Energy Laboratory Co., Ltd. as
`evidenced by the recorded assignment in parent application 09/046,685.
`(Paper 6 at 1-2).
`
`
`Tel: 571-272-7822
`
`
`
`
`
`
`
`
`
`
` Paper 8
`
`
`Entered: November, 28 2012
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`CHI MEI INNOLUX CORPORATION
`Petitioner
`
`v.
`
`Patent of SEMICONDUCTOR ENERGY
`LABORATORY CO., LTD.1
`Patent OWNER
`_______________
`
`Case IPR2013-00028
`Patent 6,404,480
`_______________
`
`
`
`Before SALLY C. MEDLEY, KARL D. EASTHOM, and JEFFREY B.
`ROBERTSON, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`DECISION – CMI Motion – 37 C.F.R. § 42.3(a)
`
`
`
`
`
`1 A paper has been filed on behalf of the patent owner indicating that the
`owner of the patent is Semiconductor Energy Laboratory Co., Ltd. as
`evidenced by the recorded assignment in parent application 09/046,685.
`(Paper 6 at 1-2).
`
`
`
`Case IPR2013-00028
`Patent 6,404,480
`
`
`A.
`Introduction
`Chi Mei Innolux Corporation (CMI), as part of its petition for inter partes
`review, requests that the Board (1) take jurisdiction over, and suspend prosecution
`of applications 12/257,514 and 12/257,521, applications that are progeny of the
`patent upon which CMI seeks review (“the involved ‘480 patent”), or (2) review
`and authorize any further patent application filings, or claim changes to
`applications 12/257,514 and 12/257,521 prior to submitting such papers to the
`examiner handling the applications (Paper 2 at 4). We treat the request as a
`motion.2 The motion is DENIED.
`
`B. Analysis
`In its petition for inter partes review, CMI argues that applications
`12/257,514 and 12/257,521 may be utilized as a possible basis to present
`patentably indistinct claims which would be inconsistent with 37 CFR §
`42.73(d)(3)(i). (Paper 2 at 3). For relief from that possibility, as stated supra, CMI
`requests that we either take jurisdiction over, and suspend prosecution of
`applications 12/257,514 and 12/257,521, or review and authorize any further patent
`application filings, or claim changes to applications 12/257,514 and 12/257,521
`prior to submitting such papers to the examiner handling the applications. (Paper 2
`at 4).
`The Trial Rules, which apply to inter partes review, set forth certain
`jurisdictional requirements. In particular, 37 CFR § 42.3(a) provides that the
`
`
`2 Ordinarily, a party requesting relief must seek Board authorization to file a
`motion. 37 CFR § 42.20(b). Here, we exercise our discretion to decide CMI’s
`request at page 2:13 to 4:10 of its petition and treat that request as a motion. 37
`CFR § 42.1(b) and 37 CFR § 42.5 (b). This decision makes no other
`
`
`
`Case IPR2013-00028
`Patent 6,404,480
`
`“Board may exercise exclusive jurisdiction within the Office over every involved
`application and patent during the proceeding, as the Board may order.” An
`“involved” patent means a patent that is the subject of the proceeding. An
`“involved” application means an application that is the subject of a proceeding, for
`example in a derivation proceeding. 37 CFR § 42.2(definition of involved).
`The ‘480 patent is involved since it is the subject matter of the proceeding.
`However, we disagree with CMI that the 12/257,514 and 12/257,521 applications
`are involved, since those applications are not the subject of the proceeding. Thus,
`there is no requirement that the Board exercise exclusive jurisdiction over those
`continuing applications of the involved ‘480 patent. Absent such a requirement to
`do so, we decline to exercise jurisdiction over the 12/257,514 and the 12/257,521
`applications and suspend prosecution of those applications.
`CMI alternatively requests that the Board review and authorize any patent
`application papers or claim changes to applications 12/257,514 and 12/257,521
`prior to submitting such papers to the examiner handling the applications. (Paper 2
`at 4). CMI’s request would require the Board to be gate keeper for all papers filed
`during ex parte prosecution of applications 12/257,514 and 12/257,521. CMI has
`not sufficiently demonstrated why the Board should take on such a role. CMI has
`not explained how the claims currently present in either of the 12/257,514 and
`12/257,521 applications are patentably indistinct from the claims of the involved
`‘480 patent.
`Moreover, the patent examiner handling the respective applications, and who
`has jurisdiction over the applications, can consider whether the claims in either of
`
`
`determinations regarding the remainder of the petition.
`
`
`
`Case IPR2013-00028
`Patent 6,404,480
`
`the 12/257,514 and 12/257,521 applications are patentably indistinct from the
`involved ‘480 patent claims. 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.
`For these reasons, we deny CMI’s request to review and authorize patent
`application papers or claim changes to applications 12/257,514 and 12/257,521
`prior to submitting such papers to the examiner handling the applications.
`C. Order
`It is
`ORDERED that CMI’s request for the Board to exercise exclusive
`jurisdiction over applications 12/257,514 and 12/257,521 and to suspend
`prosecution of those applications, or to review and authorize any further patent
`application filings, or claim changes to applications 12/257,514 and 12/257,521
`prior to submitting such papers to the examiner handling those applications is
`DENIED; and
`FURTHER ORDERED that a copy of this decision be entered in the
`administrative records of applications 12/257,514 and 12/257,521.
`
`
`
`PETITIONER:
`
`Scott A. McKeown, Esq.
`Oblon, Spivak, McClelland,
` Maier & Neustadt, LLP
`Email: cpdocketmckewon@oblon.com
`
`Gregory S. Cordrey, Esq.
`
`
`
`Case IPR2013-00028
`Patent 6,404,480
`
`Jeffer Mangels Butler & Mitchell, LLP
`Email: gcordrey@jmbm.com
`
`PATENT OWNER:
`
`Eric J. Robinson, Esq.
`Sean C. Flood, Esq.
`Robinson Intellectual Property Law Office, PC
`Email: erobinson@riplo.com
`Email: sflood@riplo.com
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