Denying Institution where Same/Substantially Same Prior Art/Arguments were Previously Presented IPR2015-00767


Takeaway: In determining whether to deny institution of an IPR petition under 35 U.S.C. § 325(d), the Board will focus on whether a later petition presents the same or substantially the same prior art or arguments, not whether the later petition includes new challenged claims.

In its Decision, the Board exercised its discretion to deny inter partes review under 35 U.S.C. § 325(d). The challenged ‘134 patent “describes a hybrid vehicle with an internal combustion engine, a traction motor, a starter motor, and a battery bank, all controlled by a microprocessor.” Petitioner challenged various claims of the ‘134 patent on three grounds of obviousness. This was Petitioner’s third attempt challenging certain claims of the ‘134 patent.

In both previously denied petitions, Petitioner relied on the disclosure of the inventor’s own earlier patent or parent patent “to meet the requirements of every challenged claim of a maximum DC voltage to current supplied to be at least 2.5.” The petitions were denied, however, because “[i]t is fundamental patent law that claims cannot be challenged as unpatentable under 35 U.S.C. §§ 102 or 103 based on the inventor’s own work, known only to them.”

In relevant part, section 325(d) states that “[i]n determining whether to institute or order a proceeding under . . . the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.”

In this third Petition, the primary obviousness reference was the same as the primary reference Petitioner relied on in one of the prior petitions, and another prior art reference was “previously relied on in explaining the state of the art, along with features known to those skilled in the art at the time of the invention, including the description . . . of a preference for a high voltage/low current hybrid systems.” The two additional references were used for only some of the challenged dependent claims. As such, the Board found “that the prior art is substantially the same as previously presented.”

The Board rejected Petitioner’s argument “that because it presents a new set of claims, e.g., consisting of previously challenged claims, but also including newly challenged claims, we must consider the Petition.” The Board stated:

We are not persuaded by this argument because the express language of 35 U.S.C. § 325(d) does not mention claims as being a factor in deciding whether to institute trial. Rather, 35 U.S.C. § 325(d) is concerned only with whether a petition presents the “same or substantially the same prior art or arguments.”

Here, the newly challenged claims appeared of similar scope as previously challenged claims and Petitioner did not persuade the Board that its arguments were “not substantially the same.” Further, the Board was not persuaded that previous page limits prevented Petitioner from presenting its present arguments in the earlier petitions because, inter alia, one of those petitions was “18 pages shy of the 60 page limit.”

In sum, the Board exercised its discretion to deny institution because “the Petition presents substantially the same prior art and arguments previously presented.” See 35 U.S.C. § 325(d).

Ford Motor Co. v. Paice LLC & The Abell Foundation, Inc. IPR2015-00767
Paper 14:  Decision Denying Institution of
Inter Partes Review
 August 18, 2015
  7,455,134 B2
 Sally C. Medley, Kalyan K. Deshpande, and Carl M. DeFranco
Written by:
Related proceedings: Paice LLC v. Ford Motor Co., C.A. No. 1:14-cv-00492 (Md.); IPR2014-00568 (not instituted); IPR2014-00852 (not instituted).