In determining whether to institute an IPR, CBM or PGR proceeding, the Board may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.
ZTE Corp. v. ContentGuard Holdings, Inc., IPR2013-00454, Paper 12 (PTAB Sept. 25, 2013) (informative). The Board exercised its discretion to deny institution under § 325(d) for a second petition against several claims that were denied review in response to a first petition filed by the same petitioner. In addition to petitioner’s reliance on the same or substantially the same prior art and arguments presented in the first petition, the Board indicated that the timing of the filing of the second petition weighed against institution. Petitioner filed the second petition after the one-year statutory bar under § 315(b) for petitions filed in the absence of a motion for joinder under § 315(c), and the Board denied petitioner’s motion for joinder because the previously instituted trial had been terminated. The Board expressed concern about encouraging, unnecessarily, the filing of petitions which are partially inadequate. A decision to institute review on some claims should not act as an entry ticket, and a how-to guide, for the same petitioner who filed an unsuccessful joinder motion, and is outside of the one-year statutory period, for filing a second petition to challenge the same claims which it unsuccessfully challenged in the first petition.
Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., IPR2013-00324, Paper 19 (PTAB Nov. 21, 2013) (informative). The Board exercised its discretion under § 325(d) to deny institution for a second petition after instituting an IPR proceeding in response to an earlier petition filed by the same petitioner against the same claims. Patent owner did not file a preliminary response for the second petition. After institution of the earlier proceeding, patent owner filed a conditional motion to amend. “Congress did not mandate that an inter partes review must be instituted under certain conditions. Rather, by stating that the Director—and by extension, the Board—may not institute review unless certain conditions are met, Congress made institution discretionary. In determining whether to institute an inter partes review, the Board may ‘deny some or all grounds for unpatentability for some or all of the challenged claims.’ 37 C.F.R. § 42.108(b); see 35 U.S.C. § 314(a).” The Board indicated that the grounds of challenge in the second petition are substantially similar to the grounds presented in the first petition. Although the second petition relied on a new reference, the Board indicated that the teachings of that reference are substantially identical to the teachings of the references asserted in the earlier petition. The Board also noted that petitioner did not provide any justification for filing the second petition other than becoming aware of the new reference asserted in the second petition after filing the earlier petition, and that petitioner did not distinguish any teaching of the new reference compared to the references asserted in the earlier petition.
Ecowater Systems LLC v. Culligan Int’l Co., IPR2013-00155, Paper 18 (PTAB June 24, 2014). The Board disagreed with patent owner’s argument that the petition was improper under § 325(d). Patent owner argued that one of the references relied upon by petitioner is cumulative to a reference considered by the Examiner during prosecution of the challenged patent. The Board stated that § 325(d) gives it the discretion whether to deny a petition that presents the same or substantially the same prior art or arguments, but the Board is not required to deny a petition for this reason. The Board also determined that the relied-upon reference was not the same or cumulative to the reference considered during prosecution.
Unilever, Inc. v. The Procter & Gamble Co., IPR2014-00506, Paper 17 (PTAB July 7, 2014) (informative). The Board exercised its discretion under § 325(d) to deny institution for a second petition against several claims that were denied review in response to a first petition filed by the same petitioner. In the second petition, petitioner relied on thirteen references, six of which were raised in the first petition. The Board noted, however, that petitioner did not present any argument or evidence that the seven newly cited references were not known or available to petitioner at the time of filing the first petition. The Board also indicated that petitioner advanced substantially the same obviousness arguments with different references substituted for the same contentions of obviousness presented in the earlier petition. The Board determined that petitioner used the prior institution decision to bolster challenges that were advanced, unsuccessfully, in the earlier petition. In denying rehearing (Paper 25), the Board indicated that authorizing such serial petitions would allow petitioners to unveil strategically their best prior art and arguments in subsequent petitions, using the Board’s decisions on institution as a roadmap, until a ground is advanced that results in review—a practice that would tax Board resources, and force patent owners to defend multiple attacks.
Prism Pharma Co., Ltd. v. Choongwae Pharma Corp., IPR2014-00315, Paper 14 (PTAB July 8, 2014) (informative). The Board exercised its discretion under §325(d) to deny institution on the basis that the issue of whether the challenged claims are entitled to the earlier date of a prior application was decided during prosecution. Petitioner argued that the subject matter recited in the challenged claims does not have written support in the parent application and are therefore anticipated by an intervening reference. The Board indicated that the issue of the priority date of the challenged claims was decided by the Examiner and his supervisor during prosecution. Based on this decision, the Board concluded that the same prior art and substantially the same arguments were previously presented to the Office during prosecution, and denied institution under § 325(d).
SAP Am., Inc. v. Clouding IP, LLC, IPR2014-00308, Paper 8 (PTAB July 10, 2014). The Board declined to exercise its discretion under § 325(d) to deny institution for a combination of two references that patent owner alleged to be substantially similar to a combination that was considered during prosecution. Patent owner argued that the examiner had considered the primary reference in combination with an earlier version of the secondary reference asserted in the petition. The Board indicated that petitioner had “presented different arguments and new supporting arguments that were not before the examiner, shedding a different light on the” asserted combination. Therefore, the Board declined to deny institution based on § 325(d).
Medtronic, Inc. v. Nuvasive, Inc., IPR2014-00487, Paper 8 (PTAB Sept. 11, 2014) (informative). Petitioner had previously filed two other petitions against the same patent. The Board denied institution for the first petition, while authorizing institution for the second petition. Petitioner then filed a third petition to remedy the deficiencies in the first petition and to provide additional arguments and evidence for one of the relied-upon references. The Board exercised its discretion to deny institution under § 325(d) for the third petition for two reasons. First, the Board noted that the trial for the second petition was instituted seven months prior for the same claims challenged in the third petition, and petitioner did not provide sufficient reasoning as to why the new grounds are not redundant other than to state that the grounds are based on different references. Second, the third petition relies on the same prior art references and substantially the same arguments as presented in the first petition.
Butamax Advanced Biofuels LLC v. Gevo, Inc., IPR2014-00581, Paper 8 (PTAB Oct. 14, 2014). The Board exercised its discretion to deny institution under § 325(d) for a second petition asserting grounds of unpatentability that were denied review in response to a first petition by the same petitioner. The Board determined that one of the challenged grounds, which was based on the same prior art relied upon in the first petition, was effectively an attempt to request rehearing of a prior decision instituting trial, outside the required time period for such requests. The Board determined that the other challenged grounds involved attempts to cure the deficiencies in the first petition by substituting new references which petitioner did not contend were unknown or unavailable to it at the time the first petition was filed.
Uniliver, Inc. v. The Proctor & Gamble Co., IPR2014-00628, Paper 21 (PTAB Oct. 20, 2014). The Board exercised its discretion under § 325(d) to deny institution for a second petition filed by the same petitioner to challenge the same claims that were challenged in a first petition. The second petition was filed after the Board denied the first petition. In the second petition, petitioner did not address § 325(d) or compare the prior art or arguments applied in the two petitions. Although the second petition relied upon different prior art references than those asserted in the first petition, the Board agreed with patent owner that both petitions apply prior art that present “substantially the same” argument regarding anticipation and obviousness of the challenged claims. The Board also noted that prior art asserted in the second petition are listed on the face of the challenged patent and therefore were “previously presented to the Office.” In addition, the Board noted that petitioner did not argue that other references asserted in the second petition were unknown or unavailable at the time of filing the first petition, which supports a reasonable inference that those references were known and available to petitioner when it filed the first petition. “[T]he interests of fairness, economy, and efficiency support declining review—a result that discourages the filing a first petition that holds back prior art for use in successive attacks, should the first petition be denied.”
CustomPlay, LLC v. ClearPlay, Inc., IPR2014-00783, Paper 9 (PTAB Nov. 7, 2014). The Board exercised its discretion to deny institution under § 325(d) for a second petition filed by the same petitioner against the same patent, because the second petition presents substantially the same prior art and substantially the same arguments as the first petition. A decision to institute review on some claims in a first IPR should not act as a how-to guide for the same petitioner filing a second petition challenging claims that it unsuccessfully challenged in the first petition or claims that it reasonably could have challenged in the first petition.
Biodelivery Sciences Int’l, Inc. v. RB Pharmaceuticals Ltd., IPR2014-00998, Paper 12 (PTAB Dec. 19, 2014). The Board exercised its discretion under § 325(d) to deny institution for a second petition filed by the same petitioner to challenge the same claims that were challenged in a first petition. In response to the first petition, the Board granted institution for a first group of challenges based on a first set of references, but denied institution for a second group of challenges based on a second set of references on the basis that the second group of challenges were cumulative to the first group of challenges. The second petition was filed with challenges similar to the second group of challenges that were denied institution in response to the first petition. In the challenges of the second petition, petitioner newly relied upon two references that were not formally included in the second group of challenges in the first petition. The Board determined that while the first petition did not formally include one of the new references in the challenged grounds from the first-filed petition, that reference was cited in the claim chart in the first petition, and the other new reference is a family member of a reference that was relied upon in the first petition. The Board denied institution on the basis that petitioner had recycled previous art and arguments.
Amgen, Inc. v. Abbvie Biotechnology Ltd., IPR2015-01514, Paper 9 (PTAB Jan. 14, 2015). The Board declined to exercise its discretion under § 325(d) to deny the petition in response to patent owner’s argument that the same or substantially the same prior art or arguments were previously presented to the Office. The Board noted, however, that the “same arguments” advanced by petitioner were advanced during prosecution of claims of related applications, not the claims at issue in the challenged patent.
Samsung Electronics, Co., Ltd. v. Rembrandt Wireless Techs., LP, IPR2015-00118, Paper 14 (PTAB Jan. 28, 2015). The Board exercised its discretion under § 325(d) to deny institution for a subsequent petition filed to overcome the deficiencies in grounds of unpatentability that were denied in an earlier petition. The Board determined that the sole difference between what petitioner presents in the subsequent petition is the presence of additional reasoning to support the assertion of unpatentability over the same prior art. The Board expressed concerns that permitting second chances would tie up the Board’s limited resources. The Board indicated that it was not apprised of a reason that merits a second chance. Petitioner simply presents an argument now that it could have made in the earlier petition, had it merely chosen to do so.
Schrader-Bridgeport Int’l v. Wasica Finance GmbH, IPR2015-00272, Paper 17 (PTAB June 1, 2015). The Board exercised its discretion to deny institution for claims that were being challenged in two other IPR proceedings in which oral hearings had already been conducted. The same petitioners were involved in one of the prior proceedings. The Board noted that petitioner did not address any of the differences between the petitions. Even if the arguments in the proceedings differ in a meaningful way, petitioner did not provide an explanation as to why the new arguments could not have been presented in one of the earlier petitions. The Board indicated that instituting review in the current proceeding would effectively extend review of the patent for another year, particularly when final decisions in the earlier IPRs were due in approximately one month.
Volkswagen Grp. of Am., Inc. v. Velocity Patent LLC, IPR2015-00276, Paper 8 (PTAB June 1, 2015). The Board declined to exercise its discretion under § 325(d) to deny institution in response to patent owner’s argument that petitioner presented substantially similar prior art or arguments that petitioner presented when requesting ex parte reexamination of the patent. In the petition, petitioner relied upon a reference that was not asserted in the reexamination to teach limitations of numerous challenged claims. Although the reference was listed by patent owner in an Information Disclosure Statement filed in the reexamination, it was not argued by petitioner in the reexamination request, or substantive addressed or even cited by the examiner. The reference was therefore not meaningfully considered in the reexamination.
Travelocity.com L.P. v. Cronos Technologies, LLC, CBM2015-00047, Paper 7 (PTAB June 12, 2015). The Board exercised its discretion under § 325(d) to deny institution on the basis that petitioner presented substantially the same arguments and prior art in an earlier petition that was denied institution. Requiring patent owner to respond to multiple assertions of substantially the same arguments based on the same references is inconsistent with the Board’s construction of the rules to ensure “the just, speedy, and inexpensive resolution of every proceeding.” 37 C.F.R. § 42.1(b). Moreover, a decision on a petition for CBM review is not simply a part of a feedback loop by which a petitioner may perfect its challenges through a subsequent filing.
Atoptech, Inc. v. Synopsys, Inc., IPR2015-00760, Paper 14 (PTAB July 21, 2015). The Board exercised its discretion under § 325(d) to deny institution because petitioner used the Board’s claim construction determination in the institution decision of an earlier IPR proceeding to prepare new arguments and new reasoning to challenge the claims. Petitioner argued that it could not have anticipated the Board’s prior claim construction. The Board disagreed, indicating that the alleged unforeseen construction by the Board was simply a refusal to accept petitioner’s proposed construction. The Board indicated that petitioner was requesting a second chance to address the unpatentability of the same claims over the same prior art at issue in the earlier petition. Permitting second chances without constraint undermines judicial efficiency by expanding the Board’s resources on issues that were not presented adequately the first time around. The instant petition presents arguments that reasonably could have been made in the prior petition but were not.
LG Elecs., Inc. v. ATI Techs. ULC, IPR2015-00327, Paper 15 (PTAB Sept. 2, 2015). The Board exercised its discretion under § 325(d) to deny institution because petitioner had relied on overlapping arguments using two common references in another petition filed against the same patent, even though different primary references were relied on in the two petitions. Petitioner argued that § 325(d) should not apply because the two petitions were filed on the same day, and § 325 states “the same or substantially the same arguments were presented to the Office.” The Board stated that its discretion would be circumvented if an unlimited number of petitions were filed on the same day, and that petitioner’s argument was contrary to the legislative history in giving the Board discretion to address “challenges that are cumulative to or substantially overlap with issues previously considered by the Office with respect to the patent.”
NetApp Inc. v. Crossroads Systems, Inc., IPR2015-00772, Paper 12 (PTAB Sept. 3, 2015). The Board exercised its discretion under § 325(d) to deny institution because petitioner had presented the same or substantially the same arguments in an earlier petition. The earlier petition was denied for not addressing certain claim limitations and for improperly relying on incorporation by reference of explanation presented in a supporting declaration. Petitioner challenged the same claims on the same grounds in the later-filed petition while correcting the deficiencies in the earlier petition. The Board indicated that petitioner was effectively asking for a second chance at arguing unpatentability of the same claims based on the same combinations of prior art presented in the earlier petition. The Board also noted that the later petition was filed shortly after the previous petition was denied, allowing petitioner to use the prior institution decision as a guide for preparing the later petition. These considerations weigh in favor of the Board exercising its discretion under § 325(d) to deny the later petition.
Universal Remote Control, Inc. v. Universal Elecs., Inc., IPR2014-01084, Paper 26 (PTAB Dec. 18, 2015). In a final written decision, the Board disagreed with patent owner’s argument that it should deny the petition under §325(d) on the basis that the Examiner previously considered a reference asserted in an anticipation challenge. The Board noted that the reference is cited in the background section of the patent, but the reference does not appear in the list of references cited on the face of the patent. The prosecution history also does not indicate that the Examiner expressly considered the reference.
Funai Elec. Co., Ltd. v. Gold Charm Ltd., IPR2015-01491, Paper 15 (PTAB Dec. 28, 2015). The Board exercised its discretion under § 325(d) to deny institution for an anticipation challenge that was considered during prosecution of the application. The Board noted that petitioner relied upon the “same textual portions and figure elements” of the asserted reference that the Examiner relied upon in an Office Action rejecting the claims. While acknowledging that petitioner disagreed with the Examiner’s conclusion, the Board indicated that petitioner “relies on the identical portions of the reference considered by the Examiner and does not present any persuasive evidence to supplement the record that was in front of the Office during the original prosecution.” The Board exercised its discretion because petitioner did not “shed[] a substantially different light on” the asserted reference.
Sony Corp. v. Imation Corp., IPR2015-01557, Paper 7 (PTAB Jan. 4, 2016). The Board declined to exercise its discretion under §325(d) to deny institution for grounds that included reference relied upon by a separate petitioner in another IPR proceeding instituted against the same patent. The Board noted that the grounds of challenge were different than the challenges in the other petition, that the petitioner in the current proceeding was not a party to the other IPR proceeding, and that petitioner relied on testimony from a different declarant than in the other IPR proceeding. The Board, however, granted institution for only two of the four asserted grounds “for reasons of administrative necessary and to ensure timely completion of the instituted proceeding.” The Board has discretion to institute review for some asserted grounds and not others. 37 C.F.R. § 42.108(a); 35 U.S.C. § 314(a). This discretion is consistent with the requirements that the IPR regulations take into account the efficient administration of Office resources “to secure the just, speedy, and inexpensive resolution of every proceeding.” 37 C.F.R. § 42.1(b).
Hydrite Chemical Co. v. Solenis Techs., L.P., IPR2015-01592, Paper 7 (PTAB Jan. 27, 2016). The Board declined to exercise its discretion under §325(d) to deny institution. The petition relied upon nine references. Patent owner argued that the Board should exercise its discretion under §325(d) because four of the nine references were considered during prosecution, including two primary references used in separate obviousness grounds. The Board declined to exercise its discretion under § 325 because petitioner provided additional art, arguments, declaration evidence and other information not previously considered by the Patent Office.
Volkswagen Grp. of Am., Inc., v. Joao Control & Monitoring Sys., LLC, IPR2015-01612, Paper 7 (PTAB Jan. 29, 2016). The Board exercised its discretion under § 325(d) to deny institution for seven of thirteen challenged claims. The Board denied institution for the seven claims because petitioner had relied on the same prior art and substantially similar arguments that were presented in a prior ex parte reexamination of the patent. The Board noted that, relative to the reexamination, one challenge in the petition relied on the same combination of prior art presented in the reexamination, except that the order of the primary and secondary references was switched. The Board determined that recasting of the obviousness grounds did not alter the prior consideration of these references in combination and denied review for the seven claims whose patentability was confirmed in the reexamination.
Shenzhen Liown Electronics Co., Ltd. v. Disney Enterprises, Inc., IPR2015-01658 (PTAB Feb. 9, 2016). The Board declined to exercise its discretion under § 325(d) to deny institution for a second petition challenging the same claims of the same patent, relying on the same prior art, relying on the same expert declaration and making the same arguments as a first petition. Although presenting the same prior art, arguments, and challenged claims on the merits, petitioner also names two additional real parties-in-interest. Petitioner indicates that it sought to avoid a potential issue by filing a new petition and paying the associated fees. The Board therefore determined that the circumstances were distinguishable from Unilver and Medtronic and declined to exercise its discretion to deny the petition.
Tietex Int’l, Ltd. v. Precision Fabrics Group, Inc., IPR2015-01671, Paper 7 (PTAB Feb. 11, 2016). The Board exercised its discretion under § 325(d) to deny institution for a first petition against a patent that petitioner had not previously challenged in an IPR proceeding. The Board faulted petitioner for not offering new evidence and/or arguments than was presented in an earlier IPR proceeding. The Board previously issued a final written decision in a related patent challenged by the same petitioner, in which the Board determined that the claims of the related patent are not unpatentable over a combination of three references. In this proceeding, petitioner relied on the same combination of three references that the Board addressed in the final written decision for the related patent. The Board noted that the two patents have identical descriptive content. While acknowledging differences between the claims of the two patents, the Board indicated that the claims of the two patents are so similar in scope and content that petitioner was relying on the same arguments that were found to be unpersuasive in the earlier proceeding. The Board denied institution for judicial efficiency and to minimize prejudice to patent owner.
Arista Networks, Inc. v. Cisco Systems, Inc., IPR2015-01710, Paper 7 (PTAB Feb. 16, 2016). The Board exercised its discretion under § 325(d) to deny institution for a second petition that challenged the same claims that were challenged in a first petition by the same petitioner. The Board denied institution of the first petition because the primary reference in the first petition did not disclose several claim features. In the second petition, petitioner relied upon a new primary reference. However, the Board indicated that, other than the substitution of the primary references, the art cited in the obviousness grounds in the second petition overlaps completely with the arguments asserted in the first petition. Further, the Board indicated that while petitioner provided more specificity in the second petition for an obviousness ground that was identified as lacking specificity in the first petition, the argument was substantially similar which causes patent owner to be forced with addressing a similar ground with similar arguments in two separate petitions. Allowing similar, serial challenges to the same patent, by the same petitioner, risks harassment of patent owners and frustration of Congress’s intention in enacting the AIA. The Board emphasized that petitioner did not contend that the newly-cited reference was not known or available to it at the time of filing the first petition.
Funai Elec. Co., Ltd. v. Gold Charm Ltd., IPR2015-01491, Paper 18 (PTAB Feb. 18, 2016). The Board denied institution of several claims because the same prior art asserted in the petition was considered by the Examiner during prosecution against those claims. On rehearing, petitioner argued that the Board reached a different conclusion than the Examiner with respect to a particular claim construction. The Board indicated that, even if different claim constructions were considered by the Board and the Examiner, the Board’s discretion under § 325(d) is not limited to cases in which the Board concurs or adopts a claim construction previously applied by the Office.
SATA GmbH & Co. KG v. Anest Iwata Corp., IPR2015-01790, Paper 14 (PTAB Feb. 19, 2016). The Board exercised its discretion under § 325(d) to deny institution for a second petition challenging claims for which the Board previously denied institution. The Board denied institution for the challenged claims on the basis that petitioner did not meet its burden in the prior petition to show that an asserted reference inherently discloses a claim limitation. In the second petition, petitioner provided testimony from two declarants to support the assertion that the reference inherently discloses the claim limitation. The Board indicated that petitioner did not persuasively demonstrate how its arguments differ in any material respect from the arguments in the prior petition. In addition, the Board indicated that petitioner did not provide specific citations to particular portions of the declarations to support its argument about the inherency of the claimed feature. Merely bolstering previously-made arguments that the Board previously found lacking, generally accompanied with non-specific evidence, does not change the argument sufficiently for the Board to consider the argument not substantially the same for purposes of § 325(d). The Board also faulted petitioner for not indicating that the additional testimony and references were unavailable when the prior petition was filed. Although petitioner is not barred from providing additional information in a later petition, the Board is more likely to exercise its discretion under § 325(d) where a petitioner uses repeated petitions in an attempt to build a sufficient challenge incrementally.
Neil Ziegman, N.P.Z., Inc. v. Stephens, IPR2015-01860, Paper 11 (PTAB Feb. 24, 2016). The Board exercised its discretion under § 325(d) to deny institution on the basis that the petition presented substantially the same or similar art or arguments as those previously presented during prosecution of the patent. During prosecution, the examiner rejected the challenged claims as obvious over two references, relying on the secondary reference to teach the feature of a shaped-end trigger. Each ground of unpatentability asserted in the petition was based on Ziegmann as the primary reference, but petitioner relied on secondary references to teach the shaped-end trigger feature. Ziegmann was considered by the examiner during prosecution but was not applied in a rejection of the challenged claims. Nevertheless, the Board determined that Ziegmann was substantively presented to and considered by the Office in conjunction with the challenged claims. The Board noted that the examiner applied Ziegmann to reject other claims of the patent, indicating that the substance of Ziegmann was considered by the examiner with respect to the challenged claims. The Board also determined that the argument regarding whether it would have been obvious to modify a primary reference to include the shaped-end trigger feature of the challenged claims was previously presented to and considered by the Office. The Board indicated that petitioner was essentially requesting the Board to second-guess the Office’s previous decision on substantially the same issue, which is not an efficient use of the Board’s resources.
Innopharma Licensing, Inc. v. Senju Pharmaceutical Co., Ltd., IPR2016-00089, Paper 13 (PTAB Feb. 25, 2016). One of the grounds of challenge asserted in the petition was substantially identical to the grounds of challenge asserted by another petitioner. To facilitate joinder, petitioner offered to proceed with only those grounds which were instituted in the earlier petition filed by another petitioner. The Board declined to exercise its discretion under § 325(d) to deny institution of the instant petition, since petitioner modified its grounds to only those grounds which were previously instituted in response to the other petition.
Coalition for Affordable Drugs (ADROCA) LLC v. Acorda Therapeutics, Inc., IPR2015-01853, Paper 13 (PTAB Mar. 11, 2016). The Board declined to exercise its discretion under §325(d) to deny institution of a petition asserting prior art references that were previously presented in an earlier petition that was denied instituion. The Board denied institution of the prior petition because petitioner did not make a threshold showing that several asserted references qualify as a printed publication. The Board declined to exercise its discretion under § 325(d) because the grounds of challenge in the instant petition relied on a new document, and the Board did not previously address whether that new document qualifies as a printed publication or whether petitioner established a reasonable likelihood of prevailing based on that new document.
Front Row Techs., LLC v. MLB Advanced Media, L.P., IPR2015-01932, Paper 7 (PTAB Mar. 25, 2016). The Board exercised its discretion under §325(d) to deny institution on the basis that petitioner asserted the same combination of two references that was considered during an ex parte reexamination, which was requested by petitioner. During the reexamination, patent owner amended the claims twice in order to overcome the combination of references. Petitioner argued that the Examiner overlooked relevant teachings of the references in determining that the challenged claims are patentable over the references. The Board disagreed, indicating that the Examiner substantively considered the same prior art and arguments substantially similar to those set forth by petitioner. The Board indicated that it was not persuaded by petitioner’s new arguments, asserting that “the analysis provided by Petitioner as to the relative similarity between the claimed subject matter and the asserted paragraphs is conclusory and unsupported by sufficient facts or evidence.” The Board indicated that “given the relative clarity of the already-considered difference in scope between” the challenged claims and asserted references, the Board “need not re-analyze those references and reconsider unpatentability issues presented previously to and considered by the Office.”
Palo Alto Networks, Inc. v. Finjan, Inc., IPR2015-01974, Paper 7 (PTAB Mar. 29, 2016). The Board exercised its discretion under §325(d) to deny institution for several grounds of challenge on the basis that certain claims of the patent are undergoing ex parte reexamination, and a final rejection in the reexamination was appealed to the Board. The Board agreed with patent owner’s argument that the reference asserted in the IPR proceeding is “the same in all material respects” as the reference asserted in the reexamination. Patent owner provided a side-by-side comparision of the disclosures of the references asserted in the petition and the reexamination. While noting that different combinations of art were presented in the petition as compared to the reexamination rejections on appeal before the Board, the Board indicated that those differences are not material. The Board determined that the same or substantially prior art or arguments have been presented previously in another proceeding. On rehearing (Paper 9), the Board indicated that § 325(d) “does not require a complete overlap” of disclosures for the Board “to deem their disclosures (or arguments presented regarding those disclosures) substantially the same.”
Sony Corp. v. Raytheon Co., IPR2016-00209, Paper 12 (PTAB Mar. 29, 2016). The Board declined to exercise its discretion under § 325(d) to deny institution for a second petition that was filed six months after a first petition for which review was granted. The Board noted that petitioner relied on different principal references in the two petitions, where the principal reference in the first petition was prior art under § 102(e) while the principal reference in the second petition was prior art under §102(b). The Board also noted that the second petition was filed prior to the Board’s institution decision for the first petition, so petitioner did not have the benefit of the institution decision in preparing the second petition.
Amerigen Pharmaceuticals Ltd. v. Shire LLC, IPR2015-02009, Paper 8 (PTAB Apr. 18, 2016). The Board rejected patent owner’s arguments that the Board should exercise its discretion under 35 U.S.C. § 325(d) to deny institution. The Board noted that three relied-upon references appear on the face of the patent as having been acknowledged by the Examiner. Patent owner argued that one of the three references was a principal reference that was overcome during prosecution. The permissive language of § 325(d) signals that the Board is not required to reject a petition simply because it relies on art that was cited to the Office previously. The Board declined to deny institution in this case, at least in part because the Board’s preliminary claim constructions differ in certain respects from those advanced during prosecution.
Telit Wireless Sols. Inc. v. M2M Sols. LLC, IPR2016-00055, Paper 9 (PTAB Apr. 22, 2016). The Board declined to exercise its discretion under § 325(d) to deny institution for challenges that were based on references which were of record during prosecution. Patent owner did not direct the Board to anywhere in the record showing a substantive discussion of the references, or that the Examiner considered a challenge to the claims in the same or substantially the same manner presented in the petition.
Hospitality Core Servs. LLC v. Nomadix, Inc., IPR2016-00052, Paper 8 (PTAB Apr. 27, 2016). The Board exercised its discretion under 35 U.S.C. § 325(d) to deny institution, in part, for grounds of challenge that were based on a reference that was previously presented to the Office in a request for inter partes reexamination. The reference received full consideration in view of the subject matter claimed in the challenged patent in the Central Reexamination Unit’s (CRU) denial of inter partes reexamination. The CRU determined that the reference was deficient for not teaching limitations of the claims, and the Board indicated that it did not find anything in the record that might demonstrate error in the CRU’s determinations.
Koito Mfg. Co., Ltd. v. Adaptive Headlamp Techs., Inc., IPR2016-00079, Paper 11 (PTAB May 5, 2016). The Board declined to exercise its discretion under § 325(d) to deny institution for obviousness challenges that included prior art previously considered by the Office. Patent owner argued that one of the asserted references was considered during prosecution of the patent, and another reference was “cumulative of the arguments raised by the petitioner in the previous inter partes reexamination.” The Board disagreed with patent owner’s argument, indicating that the primary reference for all obviousness combinations was not previously considered, the reference that was previously considered during prosecution is cited “only as a secondary reference,” the claims were amended during the inter partes reexamination and differ substantially from the claims allowed by the examiner, and patent owner did not sufficiently explain why the allegedly cumulative reference was in fact cumulative of arguments that were presented in the reexamination.
South-Tek Sys., LLC v. Engineered Corrosion Sols., LLC, IPR2016-00136 (PTAB May 12, 2016). The Board declined to exercise its discretion under § 325(d) to deny institution for an obviousness challenge that patent owner alleged was duplicative of arguments previously considered by the Office. The Board disagreed, indicating that the primary reference of the challenge was not considered during prosecution. Further, the Board disagreed with patent owner’s argument that petitioner did not present any evidence regarding why the primary reference is “more relevant than the art previously considered by the Office.” There is no requirement that petitioner needs to show that an asserted reference is more relevant than the art previously considered by the Office. The fact that other references relied on by petitioner were cited during prosecution does not establish that the asserted ground is duplicative of obviousness arguments previously considered by the Office.
Automotive Data Sols., Inc. v. AAMP of Fla., Inc., IPR2016-00061, Paper 23 (PTAB May 13, 2016). The Board declined to exercise its discretion under § 325(d) to deny institution for an issue of whether the challenged claims are entitled to the filing date of an earlier application. Patent owner argued that the issue of the earliest effective filing date had already been decided in a prior reexamination involving a related patent (citing Prism Pharma Co., IPR2014-00315, Paper 14). The Board disagreed, indicating that the filing date benefit question decided in the reexamination of the related patent was not dispositive of whether the subject matter of the challenged claims is entitled to an earlier fiing date. The Board determined that the petition established sufficiently that the subject matter of the subject challenged claims was not entitled to the earlier filing date and therefore subject to the asserted prior art.
Ariosa Diagnostics v. Verinata Health, Inc., IPR2013-00276, Paper 63 (PTAB May 24, 2016). The Board exercised its discretion under §§ 315(d) and 325(d) to terminate an ex parte reexamination filed by petitioner after the Board issued a final written decision determining that petitioner failed to demonstrate that the challenged claims are unpatentable over a first combination of references. The IPR proceeding was on remand from the Federal Circuit. In the reexamination, petitioner asserted three separate combinations of references that were not instituted or substantively considered in the IPR proceeding. The Board indicated that its authority under § 315(d) to terminate a reexamination does not depend on whether “the same or substantially the same prior art or arguments previously were presented to the Office.” Rather, under § 315(d), the Board must exercise its authority “during the pendency of an inter partes review.” The Board terminated the reexamination based on its belief that the references asserted in the reexamination are “very similar” to art presented by petitioner in the IPR proceeding, and that petitioner did not explain why the newly asserted references could not have been relied upon in the earlier IPR proceeding. The Board indicated that petitioner had the benefit of the final written decision and the Federal Circuit’s guidance on appeal. To allow petitioner to proceed with the reexamination would be unfair to patent owner.
T-Mobile US, Inc. v. TracBeam LLC, IPR2016-00745, Paper 11 (PTAB May 25, 2016). The Board exercised its discretion under § 325(d) to deny institution for the only challenged claim because petitioner previously challenged that claim on the basis of the same combination of references in a previous IPR petition. In response to the previous petition, the Board denied institution with respect to the challenged claim on the basis of the same combination of references. The Board indicated that petitioner used the prior institution decision as a roadmap to correct the errors in the first petition. The Board disagreed with petitioner’s argument that new inventor testimony should be considered when considering the combination of references asserted in the second petition. The Board indicated that petitioner did not explain how the inventor’s testimony bears on whether the combination of references teaches a feature that was found to be missing from the prior art in the earlier institution decision.
Arista Networks, Inc. v. Cisco Sys., Inc., IPR2016-00304, Paper 8 (PTAB June 6, 2016). The Board exercised its discretion under § 325(d) to deny institution for a second petition that was filed after an earlier, first petition was denied institution. The Board indicated that the second petition did not explain how petitioner’s contentions are different from those presented in the first petition, and petitioner did not provide “any cogent rationale for why the Board should undertake a second Petition asserting substantially similar prior art Petitioner previously presented.” The Board also noted that the second petition was filed approximately two months after the Board denied institution of the first petition. The Board indicated that petitioner’s reliance on a new reference “is, therefore, an attempt to bolster the unsuccessful challenge previously presented regarding [another reference’s] alleged disclosure of the determining limitation.” The Board determined that the second petition relied on the new reference to bolster the Board’s noted deficiencies in the other reference as guided by the Board’s decision in the earlier petition.
Elekta, Inc. v. Varian Medical Sys., Inc., IPR2016-00317, Paper 12 (PTAB June 7, 2016). The Board declined to exercise its discretion under § 325(d) to deny institution on the basis that petitioner had presented similar prior art and arguments against the same patent in another petition. The Board indicated that although both petitions “address the same patent and some of the same prior art, the arguments presented are not the same because each challenges a different set of claims. We see no reason to bar Petitioner from challenging different claims at different times in separate petitions.”
Great West Casualty Co. v. Intellectual Ventures II LLC, IPR2016-00453, Paper 12 (PTAB June 9, 2016). The Board exercised its discretion under §§ 314(a) and 325(d) to deny institution for all grounds of challenge because it was the fourth petition filed by petitioner against the same claims. In one of the prior petitions, petitioner relied on the same primary reference that was asserted in the instant petition. The Board noted that petitioner filed the instant petition after patent owner filed its preliminary response, and relied on a nesw secondary reference in case the Board adopted patent owner’s claim construction. The Board indicated that it was “unpersuaded generally that the possibility of an adverse determination alone is a sufficient basis to justify institution of a subsequent petition….Petitioner cannot expect automatic institution on multiple petitions submitted for consideration, especially if they are against the same claims, of the same patent, using substantially the same prior art, and filed so long apart that Petitioner received the benefit of having studied Patent Owner’s Preliminary Response in an earlier Petition.” The Board also noted that petitioner did not indicate that it was unaware of the newly asserted reference when it filed the instant petition.
Activision Blizzard, Inc. v. Acceleration Bay, LLC, IPR2016-00932, Paper 13 (PTAB June 23, 2016). The Board exercised its discretion under § 325(d) to deny institution for a second petition filed to challenge a claim for which institution was denied in response to an earlier petition. In the second petition, petitioner presented two different grounds of challenge: a first obviousness challenge based on the primary reference alone, and a second obviousness challenge based on the primary reference and the secondary reference. The petitioner relied on the same prior art asserted in the earlier petition, but the grounds of challenge were different in the second petition. The Board determined that petitioner relied on substantially the same arguments that were asserted in the earlier petition. For the first obviousness challenge in the second petition, the Board noted that petitioner previously relied on the secondary reference in combination with the first reference, but petitioner did not persuasively explain why it could not have challenged the claim based on the primary reference alone in the earlier petition. For the second obviousness challenge, the Board noted that petitioner switched the order of the primary and secondary references in comparison to the earlier petition. The Board indicated that this switch was of “no significance,” and that petitioner relied in large part upon the same disclosures in the references to contend the claim was obvious. The Board also indicated that a challenge to the claim in a related IPR was further reason to deny the challenge.
Lower Drug Prices for Consumers, LLC v. Forest Labs. Holdings Ltd., IPR2016-00379, Paper 14 (PTAB July 1, 2016). The Board exercised its discretion under § 325(d) to deny institution because petitioner’s challenge was based on the same primary reference addressed during prosecution, including by the Board in an appeal, and petitioner presented substantially the same arguments regarding how the primary reference would have been modified. Although the prior panel of the Board expressly set forth the deficiencies in the examiner’s position with respect to the evidence of unexpected results, the petition is silent as to those deficiencies. Because petitioner did not address these issues, or explain why the evidence of unexpected results is insignificant, the Board indicated that it was not inclined to reconsider the Board’s prior decision.
Samsung Elecs. Co., Ltd. v. Elm 3DS Innovations, LLC, IPR2016-00388, Paper 11 (PTAB July 1, 2016). The Board declined to exercise its discretion under § 325(d) to deny institution on the basis that petitioner relied on similar arguments of unpatentability that were considered by the examiner during prosecution. Patent owner argued that petitioner replaced the primary reference in an obviousness rejection during prosecution of a related patent application with a different primary reference having the same teachings. The Board indicated that, to the extent patent owner was arguing that the Board should give deference to earlier determinations of allowability because of the examiner’s “explicit consideration” of a similar combination during examination, there is no presumption of validity as to the challenged claims in an IPR. Furthermore, § 325(d) has permissive language indicating that the Board may take into account whether the same or substantially the same prior art or arguments were previously presented to the Office. The Board also noted that petitioner’s expert declaration was not before the Office during prosecution.
Boehringer Ingelheim Int’l GmbH v. AbbVie Biotechnology Ltd., IPR2016-00409, Paper 9 (PTAB July 7, 2016). The Board declined to exercise its discretion under § 325(d) to deny institution. Patent owner argued that petitioner asserted substantially the same prior art and arguments that were considered by the examiner during prosecution. The Board noted that petitioner relied on two expert declarations, which patent owner did not allege are duplicative of evidence previously presented to the Office. Further, the examiner relied upon testimonial evidence that was not subject to cross-examination in determining patentability of the claims.
Munchkin, Inc. v. Skip Hop, Inc., IPR2016-00536, Paper 12 (PTAB July 21, 2016). The Board declined to exercise its discretion under § 325(d) to deny institution because an asserted reference had been considered during prosecution. Although the asserted reference was of record during prosecution of the patent, patent owner did not identify anywhere in the record showing that the examiner considered a challenge to the claims involving the same or substantially the same combination of references presented in the petition.
Microsoft Corp. v. Bradium Techs. LLC, IPR2016-00448, Paper 9 (PTAB July 25, 2016). The Board declined to exercise its discretion under § 325(d) to deny institution for a second petition that asserted a new combination of references after an earlier petition was denied institution. The Board disagreed with patent owner’s arguments that the second petition was an improper “do-over” that used the initial institution decision as a “roadmap,” and that patent owner was prejudiced by the timing of the second petition. The Board indicated that petitioner did not present an unreasonable number of challenges, and that the filing of the second petition near the end of the statutory period did not demonstrate prejudice. “To the contrary, the timing of the petitions illustrates that Petitioner acted expeditiously after being sued by Patent Owner and that the one year statutory time bar for filing a petition imposed by 35 U.S.C. § 315(b) provides a self-limiting mechanism that protects Patent Owner from prejudice resulting from serial attacks from the same Petitioner….It is unrealistic to assume a second petition will not attempt to address deficiencies of an earlier petition, and there is no established per se rule of the Board requiring that we deny institution based on a ‘roadmap’ test.”
Praxair Distribution, Inc. v. Ino Therapeutics LLC, IPR2016-00781, Paper 10 (PTAB Aug. 25, 2016). The Board denied institution of a second petition filed against the challenged patent on the basis that petitioner was estopped from pursuing the new grounds of challenge, and the Board exercised its discretion under § 325(d) to deny institution for the new challenges. Although petitioner newly asserted two new references, the Board determined that petitioner’s “underlying argument” was “essentially the same as that raised” in the earlier petition. The Board reasoned that petitioner’s new argument was that the newly-asserted reference expressly state that which one of ordinary skill in the art would have understood from the prior art asserted in the earlier petition.
Frontier Therapeutics, LLC v. Medac Gesellschaft Für Klinische Spezialpräparate mbH, IPR2016-00649, Paper 10 (PTAB Sept. 1, 2016). The Board declined to exercise its discretion under § 325(d) to deny institution for grounds of challenge that were previously considered and instituted by the Board in response to an earlier petition filed by a different petitioner. Patent Owner contends that the “Board should not countenance this behavior by a reverse patent troll [i.e., petitioner], who is looking for no more than a quick payoff” in the form of a settlement. In the prior IPR involving a different petitioner, the Board instituted trial on the same grounds at issue in this proceeding, but terminated the proceeding before issuing a final written decision. In addition, by statute, the AIA provides that “a person who is not the owner of a patent may file with the Office a petition to institute an inter partes review of the patent.’”