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January 19, 2018Newsletter

This Week at the Board - January 19, 2018

Board Exercises Discretion Under §325(d) To Deny Institution of IPR

In IPR2017-01665, the Board recently exercised its discretion under §325(d) to deny institution, finding that the petitioner (Google) was attempting to invalidate claims based on the same prior art or arguments already raised before the PTO. In particular, the Board noted that the petitioner was contending that claims 1-25 of the patent at issue were been obvious over two pieces of prior art. This combination of references, however, had previously been raised to attack the claims by a different petitioner (Amazon) in a previous IPR proceeding. The Board found that Google had waited until after the patent owner preliminary response in the previous proceeding before filing its own petition, effectively using the patent owner preliminary response as a roadmap to correct deficiencies raised by the patent owner. Google argued that its arguments were not redundant to Amazon’s because Google was challenging the Board’s claim construction, and that “additional arguments” were thus included. The Board, however, did not agree that any such alleged additional arguments were enough to make petitioner’s arguments overall not substantially the same as those previously raised. Additionally, Google asserted that one of its grounds included an additional third reference not raised previously. The Board, however, found that this third reference did not address a claim construction dispute or identify a potential deficiency with the combination of the first two references. Thus, the Board did not find its inclusion as meaningful, and concluded again that the petitioner was relying on substantially the same prior art or arguments.

A link to the decision is found here.


Board Denies IPR Based On References Known To Petitioner In Prior Failed IPR

In IPR2017-01659, the Board recently denied institution of an IPR challenging US Patent 9,119,931 based mainly on the fact that the newly cited references were known to the petitioner when they had previously filed two separate IPRs. The petitioner did not dispute that they were aware of the cited references when filing the prior IPRs, but argued that they did not think the references were necessary when relying on the ordinary meaning of the claim terms. The petitioner argued that the Board’s construction in the earlier decisions necessitated the new petition with the newly cited art. The Board noted that the petitioner could have requested a rehearing, but instead gathered new references using the prior decision as a roadmap. Weighing the factors set forth in Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357 (PTAB Sept. 6, 2017), the Board found that non-institution was appropriate.

A link to the decision is found here.

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