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June 15, 2018Newsletter

This Week at the Board - June 15, 2018

PTAB Dismisses IPR for Failure to Repay Previously Refunded Fees

In IPR2017-01506, the Board terminated the proceeding based on Petitioner’s failure to timely repay a prior refund of the post-institution fee. Petitioner received a refund in connection with 15 patent claims that were denied review in the institution decision. Based on the Supreme Court’s SAS decision, the Board modified the institution decision to institute on all claims challenged and all grounds presented in the Petition. The Board ordered the Petitioner to repay the refunded post-institution fee within five business days of the modification order or else the proceeding would be terminated. The Petitioner advised the Board that they would not repay the refunded fees, and sought termination of the proceedings without a final written decision. Attempting to secure a final written decision, the Patent Owner authorized the Board to charge their deposit account to cover the refund after the Board’s initial deadline had expired. Based on these circumstances, the Board determined that once the deadline had past, and the Petitioner had expressly declined to pay, the Petition became defective and termination of the proceedings was appropriate.

A link to the decision is found here.

PTAB Denies Institution of Samsung’s Second IPR Petition of University’s Semiconductor Patent

In Samsung Electronics Co. Ltd. v. KAIST IP US LLC (IPR2018-00266), the board denied institution of an IPR petition brought by Samsung, Qualcomm, and GlobalFoundries, against a semiconductor patent owned by Korea Advanced Institute of Science and Technology.  Samsung’s First Petition was denied, as was its request for rehearing. Two months after the decision denying institution, Samsung filed a Second Petition, arguing that it was “essentially identical” to the First Petition except that it no longer relied on a reference for an element of claim 1. Samsung argued that because it did not add any new evidence, it had not derived an unfair advantage from the prior petition. KAIST argued that the Second Petition was nothing more than a third attempt at the same arguments considered in the First Petition and the rehearing.

In weighing the General Plastic factors, the Board found that factors 1-5 weighed against institution, and that the remaining two factors were neutral. In particular, the Board found that the use of the decision from the First Petition and the previous Patent Owner’s Response as a roadmap weighed heavily against institution. Because the Second Petition also relied on the same prior art as the first, the Board indicated that it was authorized to decline intuition under 325(d).

A link to the decision is found here.

PTAB Finds That Estoppel Applies To Petitioners That Joined Another IPR

In IPR2017-01427, the petitioners filed their petition, and then subsequently filed a second petition a month later with a motion for joinder with another IPR (IPR2017-00225) in which a subset of the claims from the same patent were being challenged.  The motion was granted.  The Board issued a final written decision in IPR2017-00225, prior to conducting the trial in IPR2017-01427.  Accordingly, the Board was asked to determine what estoppel, if any, applied to the petitioners.  The Board determined that the petitioners were estopped from moving forward with certain grounds of argument in IPR2017-01427 because those grounds could have reasonably been raised in IPR2017-00225, and were not when the petitioners filed their joinder.  The Board did, however, permit the petitioners to remain on in IPR2017-014127 with respect to one patent claim that was not addressed in IPR2017-00225 but was addressed in IPR2017-01427.

A link to the decision is found here.

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