Takeaway: Under 37 C.F.R. § 42.73(d)(3)(i), a patent applicant or owner may not take any action that is inconsistent with the Board’s adverse judgment, including obtaining in any patent a claim that is not patentably distinct from a finally refused or canceled claim.

In its Order, the Board denied Petitioner’s request for authorization to file a Motion to Stay Prosecution of pending U.S. Continuation Patent Application Serial Number 13/925,110.  According to the Board, it would be premature at the present time to bar Patent Owner from seeking the allowability of claims that may end up being patentably distinct from the claims under analysis in the instant proceeding.

Petitioner had sought authorization to file a motion to stay prosecution of Patent Owner’s ’110 application.  It was Petitioner’s view that claims in the ’110 application were not patentably distinct from the claims under consideration in the instant proceeding, and that, therefore, “a stay of a few months” would prevent inconsistent patentability determinations in the two matters.  Patent Owner disagreed.  It alleged that the Board did not have authority to implement the requested stay of prosecution of the ’110 application.

The Board denied Petitioner’s request for authorization to file the Motion to Stay, indicating that consistent with 37 C.F.R. § 42.73(d)(3)(i), “Patent Owner will not be permitted to obtain in a patent any claims that are not patentably distinct from any claim that is canceled as a result of this proceeding.”  According to the Board, it was sufficient in the present cases if Patent Owner simply continued to keep the Examiner handling prosecution of the ’110 application apprised of developments in the instant proceeding.

A.C. Dispensing Equipment Inc. v. Prince Castle LLC, IPR2014-00511 
Paper 18: Order on Conduct of the Proceeding 
Dated: October 17, 2014
Patent: 8,534,497 B2 
Before: Linda M. Gaudette, Donna, M. Praiss, and Scott E. Kamholz
Written by: Kamholz