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Takeaway: The Board may exercise its discretion to deny institution of grounds based on references that had already been presented in prior IPR proceedings, especially where the new proceeding would delay final decision regarding the patent for an additional year.

In its Decision, the Board denied institution of the Petition as to all challenged claims of the ’524 patent. Prior to deciding the issue of institution, Patent Owner filed a Preliminary Response, and, pursuant to Board authorization, Petitioner and Patent Owner each filed supplemental briefing on the application of 35 U.S.C. § 325(d) to the instant proceeding. Continue reading →

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Takeaway: The Board may exercise its discretion in denying institution of a serially-filed petition where the petitioner does not explain how the newly-asserted grounds add substantively to or can be meaningfully distinguished from the grounds of a previous petition.

In its Decision, the Board exercised its discretion under 35 U.S.C. §§ 315(d), 325(d) in denying institution of inter partes review of the ’115 patent. In particular, the Board found that Petitioner failed to show that any grounds asserted in the instant Petition “adds substantively to the grounds on which [the Board] instituted inter partes review in Case IPR2015-00470.” Continue reading →

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Takeaway: The Board may deny institution of review where petitioner merely replaces a non-citable reference in a prior review with a citable reference, but otherwise challenges the same claims with the same arguments.

In its Decision, the Board denied institution of covered business method review of claims 1-11, 13-17, and 19-22 of the ’808 patent. Petitioner asserted obviousness challenges to claims 1-11, 13-17, and 19-22 with a combination of Tumminaro, Ogilvy, and Ondrus II as base references, and up to two of Dalzell, Carlson, Elston, Tripp, and Deschryver. Petitioner also alleged claims 8 and 19 were unpatentable based on a combination of Bemmel, Dalzell, and Ondrus II. Continue reading →