Under 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a), the Board has the discretion to institute inter partes review on all or some of the challenged claims and on all or some of the asserted grounds of unpatentability. The Board has similar discretion under 35 U.S.C. § 324(a) and 37 C.F.R. § 42.208(a) for CBMs and PGRs. The Board may deny institution for grounds of challenge that are deemed to be “redundant” to other grounds of challenge presented in a petition.
Great West Casualty Co. v. Transpacific IP I Ltd., IPR2015-01912, Paper 10 (Mar. 22, 2016). In a decision to institute, the Board rejected patent owner’s argument that the Board should not institute several allegedly redundant grounds. The Board was not persuaded that an asserted obviousness ground based on the patent should not be maintained alongside the anticipation ground based on the patent. Petitioner has made a sufficient threshold showing on both grounds. Further, petitioner provides distinct reasoning and expert testimony to support the ground based on obviousness. Petitioner also identifies what patent owner may or may not argue are shortcomings in the patent’s disclosure, and thereafter provides two additional references directed at those areas. The Board determined that the use of the two additional references was rational, narrowly targeted, and not burdensome considering only five claims with very similar limitations are at issue in the proceeding.
Alarm.com Inc. v. Vivint, Inc., IPR2015-01965, Paper 12 (PTAB Mar. 30, 2016). The Board partly granted institution of inter partes review of a patent under 35 U.S.C. §§ 102(b) and 103(a). Petitioner argues that the grounds asserted in the instant Petition are not cumulative with respect to the grounds asserted in the co-pending petition filed in IPR2015- 01967, but Petitioner makes no such arguments regarding the various grounds asserted in the instant Petition. The Board indicated that it has “broad discretion to institute an inter partes review as to some asserted grounds and not others….[W]e may elect not to institute on grounds that have not been shown to be necessary to address the challenged claims or to be superior to other grounds.” In view of its statutory and regulatory mandates, the Board’s determination to institute inter partes review of all challenged claims on at least one ground, and in the absence of persuasive argument by petitioner as to why the Board should also institute review on the alternative grounds, the Board exercised its discretion and did not institute inter partes review as to the alternative grounds asserted by petitioner.
Old Republic Gen. Ins. Grp., Inc. v. Intellectual Ventures I LLC, IPR2015-01956, Paper 20 (PTAB Apr. 18, 2016). The Board partly granted institution of inter partes review. Pursuant to its discretion under 35 U.S.C. § 315(d), the Board declined to institute on three grounds. The Board indicated that petitioner did not “explain adequately why one set of grounds is preferred over the other.” Petitioner “does not explain the weaknesses or strengths of one ground over the other, or express a preference for either ground.” The Board indicated that it has “broad discretion to institute an inter partes review as to some asserted grounds and not others…. Accordingly, pursuant to our authority under 35 U.S.C. § 315(d) to manage inter partes proceedings with the objective of ‘secur[ing] the just, speedy, and inexpensive resolution of every proceeding,’ we decline to institute trial on these remaining grounds.”
Hughes Network Sys., LLC v. Calif. Inst. Of Tech., IPR2015-00059, Paper 42 (PTAB Apr. 21, 2016). The Board rejected patent owner’s argument that the petition failed to name parent and affiliated entities as RPIs. Petitioner identified its ultimate parent entity under the heading “Real Party-in-interest” in the petition, which identification is in accordance with the PTO’s published guidance of August 12, 2004. The Board determined that there is no new evidence showing that the ultimate parent controls the IPR proceeding, and that petitioner named its ultimate parent in accordance with the prior published guidance. As such, petitioner has not failed to name its ultimate parent as an RPI. Patent owner has failed to show that the petition was filed at the behest of the affiliated entity. The key to a RPI inquiry is the relationship between the potential unnamed RPI and the proceeding, not the relationship between parties. There is no persuasive evidence of record that the affiliated entity controls or even had an opportunity to control petitioner’s decision to file or maintain this inter partes review.