Takeaway: The Board does not have the authority under 35 U.S.C. § 315(d) to stay the prosecution of related pending patent applications.

In its Order, the Board denied Petitioner’s request for authorization to file a motion to stay the prosecution of related, pending U.S. Patent Application Nos. 13/660,706 and 14/307,122. It had been Petitioner’s position that at least one of the claims of these pending patent applications was patentably indistinct from at least one of the claims of the ’268 patent challenged in the instant proceeding. Thus, according to Petitioner, “if certain claims in the ’268 patent are found unpatentable in this 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).”

In declining Petitioner’s request, the Board made a number of observations. First, the Board noted that because a final determination as to the patentability of the challenged claims of the ’268 patent had not yet been made in the instant proceeding, Petitioner’s reliance on 37 C.F.R. § 42.73(d)(3)(i) was deemed to be premature. With reference to 35 U.S.C. 311(b), the Board next pointed out that “an inter partes review merely involves a review of the involved patent, rather than a family of patents and applications.” Finally, the Board noted that it “does not have the authority under 35 U.S.C. § 315(d) to stay prosecution of related patent applications” (although at the same time the Board did indicate that it had the power to stay a reexamination proceeding involving the patent at issue).

Chums, Inc. and Croakies, Inc. v. Cablz, Inc., IPR2014-01240

Paper 22: Order on Conduct of the Proceeding

Dated: May 8, 2015

Patent 8,366,268 B2

Before: Josiah C. Cocks, Jeremy M. Plenzler, and Kristina M. Kalan

Written by: Plenzler