In its Decision, the Board denied joinder of the instant proceeding with IPR2014-00901 and denied institution of the Petition. In particular, the Board held that Petitioner was estopped from requesting inter partes review under 35 U.S.C. § 315(e)(1) based upon a final written decision in IPR2013-00635.
35 U.S.C. § 315(e)(1) provides that:
The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318(a), or the real party in interest or privy of the petitioner, may not request or maintain a proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that inter partes review.
Petitioner in the present IPR was also the petitioner in the ’635 IPR, which also challenged the same ’346 patent. A final written decision was entered on February 27, 2015 in the ’635 IPR finding that the petitioner in that proceeding had not shown the challenged claim to be unpatentable by a preponderance of the evidence. Therefore, the Board held that the first two requirements – same petitioner and entry of a final written decision – were met.
With respect to the challenge of claims 1-3 and 5-8 of the ’346 patent, the Board held that Petitioner “could have raised” the asserted grounds of the instant IPR in the ’635 IPR. Referring to the legislative history of the AIA, the Board noted that the “could have raised” language is to be applied broadly to include “prior art which a skilled searcher conducting a diligent search would reasonably could have been expected to discover.” However, the Board did not need to “investigate what any search might have uncovered” because the Mylex and Hathorn prior art references relied upon in the instant Petition had already been asserted in the ’635 IPR. The Board noted that the manner in which the references were applied slightly differed, but held that “the differences in how the references have been asserted in these proceedings have no weight on our determination of whether the grounds raised in the instant Petition could have been raised in the ’635 IPR.” In this regard, while the Hathorn reference was asserted to be anticipatory in the ’635 IPR, the same reference was asserted under obviousness grounds in the instant petition. The Board held that the combination of Mylex and Hathorn to show obviousness could have been raised in the ’635 IPR.
With respect to the challenge of claims 4 and 9, the Board held that review of those claims was not precluded by estoppel under Section 315(e)(1). In particular, estoppel applies to “review of a claim in a patent under this chapter that results in a final written decision,” and the ’635 IPR final written decision did not address claims 4 and 9. Nonetheless, the Board denied the Motion for Joinder and denied institution as barred under Section 315(b) because Petitioner had been served with a complaint for infringement more than one year before filing the instant Petition.
In denying joinder, the Board exercised its discretion under Section 315(c). In particular, the Board noted that joinder would not be appropriate in this case “for less than all the asserted claims.” The Board also explained the complications that joinder would bring. Were joinder granted, “the case would proceed on different claims depending on the party;” the ’901 IPR would be complicated by the addition of a “third Petitioner (or more), with grounds that are limited to a small subset of the ongoing trial;” and “additional time, effort and expense [would] fall to Patent Owner.”
Dell Inc., Hewlett-Packard Co., and Netapp, Inc. v. Elec. And Telecommunications Research Institute, IPR2015-00549 Paper 10: Decision – Denial of Institution of Inter Partes Review and Denial of Motion for Joinder Dated: March 26, 2015 Patent: 6,978,346 B2 Before: Brian J. McNamara, Miriam L. Quinn, and Gregg I. Anderson Written by: Anderson Related Proceedings: IPR2014-00901; IPR2014-00949; IPR2013-00635