`Trials@uspto.gov
`Tel: 571-272-7822
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`
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`
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`
`
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` Paper 7
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`
`Entered: November, 28 2012
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`
`
`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.
`Patent OWNER
`_______________
`
`Case IPR2013-00038
`Patent 7,956,978
`_______________
`
`
`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)
`
`
`
`
`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
`
`
`
`Case IPR2013-00038
`Patent 7,956,978
`
`of application 13/484,800, an application that is a progeny of the patent upon
`which CMI seeks review (“the involved ‘978 patent”), or (2) review and authorize
`any further patent application filings, or claim changes to application 13/484,800
`prior to submitting such papers to the examiner handling the application (Paper 2 at
`4). We treat the request as a motion.1 The motion is DENIED.
`
`B. Analysis
`In its petition for inter partes review, CMI argues that application
`13/484,800 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 application 13/484,800, or review
`and authorize any further patent application filings, or claim changes to application
`13/484,800 prior to submitting such papers to the examiner handling the
`application. (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
`“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).
`
`
`1 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 IPR2013-00038
`Patent 7,956,978
`
`
`The ‘978 patent is involved since it is the subject matter of the proceeding.
`However, we disagree with CMI that the 13/484,800 application is involved, since
`the application is not the subject of the proceeding. Thus, there is no requirement
`that the Board exercise exclusive jurisdiction over the continuing application of the
`involved ‘978 patent. Absent such a requirement to do so, we decline to exercise
`jurisdiction over the 13/484,800 application and suspend prosecution of the
`application.
`CMI alternatively requests that the Board review and authorize any patent
`application papers or claim changes to application 13/484,800 prior to submitting
`such papers to the examiner handling the application. (Paper 2 at 4). CMI’s
`request would require the Board to be gate keeper for all papers filed during ex
`parte prosecution of application 13/484,800. CMI has not sufficiently
`demonstrated why the Board should take on such a role. CMI has not explained
`how the claims currently present in the 13/484,800 application are patentably
`indistinct from the claims of the involved ‘978 patent.
`Moreover, the patent examiner handling the application, and who has
`jurisdiction over the application, can consider whether the claims in the 13/484,800
`application are patentably indistinct from the involved ‘978 patent. If the examiner
`makes a determination that the claims of the application are patentably indistinct
`from the ‘978 patent claims, then the examiner can suspend the application
`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 application
`13/484,800 prior to submitting such papers to the examiner handling the
`
`
`determinations regarding the remainder of the petition.
`
`
`
`Case IPR2013-00038
`Patent 7,956,978
`
`application.
`C. Order
`It is
`ORDERED that CMI’s request for the Board to exercise exclusive
`jurisdiction over application 13/484,800 and to suspend prosecution of the
`application, or to review and authorize any further patent application filings, or
`claim changes to application 13/484,800 prior to submitting such papers to the
`examiner handling the application is DENIED; and
`FURTHER ORDERED that a copy of this decision be entered in the
`administrative records of application 13/484,800.
`
`
`PETITIONER:
`
`Scott A. McKeown, Esq.
`Oblon, Spivak, McClelland,
` Maier & Neustadt, LLP
`Email: cpdocketmckewon@oblon.com
`
`Gregory S. Cordrey, Esq.
`Jeffer Mangels Butler & Mitchell, LLP
`Email: gcordrey@jmbm.com
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2013-00038
`Patent 7,956,978
`
`
`
`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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