What is an “Involved Application” in IPR Practice?

Scott Daniels | December 6, 2012

The Petitioner in Chi Mei Innolux v. Semiconductor Energy Laboratory, IPR2013-00028, has tried an interesting gambit: it has asked that the prosecution of two applications that are related to the patent in inter partes review (IPR) be stopped.

SEL’s U.S. Patent No. 6,404,480 – that is the subject of the inter partes review – is also a member of a large family of patents, as shown by the following chart that appears in Chi Mei’s Petition.


Chi Mei told the APJs that there were two pending applications – 12/257,514 and 12/257,521 – and that “these applications may be utilized as a basis to present patentably indistinct claims, and may, if allowed to continue, proceed to issuance prior to the determination of the PTAB in this IPR.”  Presentation of such patentably indistinct claims would be “an ‘end-around’ the reasonable number of substitute claims that may be presented in this proceeding.”

Chi Mei then cited 37 C.F.R. § 42.3 for “convey[ing] exclusive jurisdiction to the PTAB over every involved application and patent during the proceeding… .”  Given such exclusive jurisdiction over “involved applications,” Chi Mei argued, “it is appropriate … for the PTAB to suspend, sua sponte, further prosecution of the above noted applications, or at least require any further patent application filings, or claim changes to be authorized by the PTAB prior to submission to the USPTO.”  In essence, Chi Mei asked the APJs to prevent SEL from claiming in the two co-pending applications the same subject matter it has claimed in the ‘480 patent in the present IPR.

Chi Mei’s assertion is similar to a type of motion commonly filed in interference practice, specifically a motion by one party to bring certain of the other party’s pending applications into the interference because they contain claims that are “patentably indistinct” from the interference count.  The notion underlying such “motions to add” in interference practice is to resolve all conflicting claims over the subject matter of the count.

APJ Sally Medley and the other APJs were not convinced.  APJ Medley began by acknowledging the reference in § 42.3 to “involved applications,” but found that the phrase means “an application that is the subject of the proceeding,” not a related application.  Since SEL’s ‘514 and ‘521 applications are only related applications and “are not the subject of the proceeding,” the APJs were not required to exercise jurisdiction over them.

APJ Medley also refused “to be gate keeper for all papers filed during ex parte prosecution of” SEL’s ‘514 and ‘521 applications.  “CMI has not explained how the claims currently present in either [application] are patentably indistinct from the claims of the involved ‘480 patent.”

Perhaps the Patent Office needs a mechanism for preventing a patent owner from pursuing the same claims in an ex parte application, that are in a co-pending IPR.  Without such a mechanism, there is the possibility of inconsistent rulings by the ex parte examiner and the APJs.

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