Takeaway: Arguments and citation to prior art in a petition that attempt to buttress the same arguments previously considered and found insufficient by the Board will likely be found to be the same or substantially the same in the Board’s exercise of discretion to deny institution under Section 325(d).

In its Decision, the Board exercised its discretion under Section 325(d) and decided not to institute trial because “the instant Petition raises the same or substantially the same prior art or arguments as those previously presented to the Office in the prior related inter partes review proceedings.”

The Board first described the several related proceedings before the PTAB. In IPR2014-00637 (“Sumitomo IPR”) challenging claims 1-12 of the ’586 patent, the proceeding was terminated before institution by motion of the parties. In IPR2014-00524 (“MPI IPR”) also challenging claims 1-12, trial had been instituted as to claims 7-11. Following oral hearing, the proceeding was terminated pursuant to the parties’ joint motion. In IPR2014-00679 (“SKI ’679 IPR”), trial was instituted as to claims 1-12, with the Board finding claims 7-10 to be unpatentable. In IPR2014-00680 (“SKI ’680 IPR”), instituted claims 7-11 were found unpatentable. Finally, in IPR2014-00692 (“LGC IPR”), of the instituted claims 1-12, claims 1-11 were found unpatentable.

Petitioner had filed its Petition challenging claims 1-6 and 11 of the ’586 patent. The Board noted that each challenged claim has been found unpatentable in the final written decisions in one or more of the SKI IPRs or the LGC IPR.

The Board addressed Patent Owner’s request to deny institution under Section 325(d) because the Petition presents “the same or substantially the same prior art or arguments” as previously presented to the Office. The Board analyzed each of the four asserted grounds, comparing them to the prior proceedings.

Petitioner had asserted that claims 1-3, 5, 6, and 11 are anticipated by Tojo. Tojo had been raised “as the basis for an anticipation ground of unpatentability in each of the Sumitomo IPR, the MPI IPR, the SKI ’679 IPR, and the LGC IPR.” Trial had been instituted for claims 1-3, 5, 6, and 11 in the SKI ’679 IPR and in the LGC IPR, with the Board ultimately concluding that the petitioners in those proceedings did not establish unpatentability of those claims. Since Petitioner did not indicate how its arguments may differ, the Board concluded this ground presented the same art and arguments.

Petitioner had further asserted that claims 1-3, 5, 6, and 11 are unpatentable as obvious over Tojo and Tsukamoto. In the SKI ’680 IPR, the Board had “instituted trial of claims 7–11 on a ground of unpatentability alleging obviousness over Tsukamoto, Lundquist, and Tojo, and ultimately found those claims unpatentable on that basis.” Although Petitioner’s ground had asserted “a subset of the same art,” no indication was provided as to how the arguments differed in the instant Petition. Therefore, the Board concluded that the same or substantially the same art and arguments were presented.

Petitioner had asserted obviousness of claims 1-6 and 11 over Tobishima and Ishida. In the LGC IPR, the Board had “instituted trial as to claims 1–6 and 11 [as obvious over Tojo and Tobishima], and ultimately determined claims 1–6 and 11 to be unpatentable.” Ishida had not been previously cited to the PTAB in any of the related proceedings. Further, Petitioner “expressly distinguishes the argument of its ground from the Tobishima/Tojo ground asserted in the LGC IPR, stating that Ishida expressly contradicts an argument made by Dr. Wensley, [Patent Owner’s] expert, in the LGC IPR.” In particular, Ishida was cited for its alleged disclosure “that adding ceramic particles to its gel polymer electrolyte exhibits high conductivity” to contradict testimony in the LGC IPR that one of ordinary skill in the art would not have combined Tojo and Tobishima based on a reduction of “the conductivity of the layer.” The Board concluded that the Petition did not present the same art and arguments in this ground, but that “the two cases [] present substantially the same prior art and arguments.” In particular, Ishida was being relied upon by Petitioner for the same disclosure of Tojo in the LGC IPR, and the arguments did not “differ in any significant, material respect.” Although Ishida allegedly addressed a deficiency related to the motivation to combine Tojo and Tobishima, the Board “did not consider a reason to modify … to be lacking in the LGC IPR.” Therefore, “the only difference in argument indicated by [Petitioner] addresses an alleged deficiency in Tojo that [the Board] did not consider to be a deficiency.”

Finally, Petitioner had asserted anticipation of claims 1-6 and 11 by Lundquist, which is a continuation-in-part application of the Lundquist ’730 patent cited in the MPI and LGC IPRs. The Board concluded that the prior art was substantially the same as previously presented. Petitioner had also directly addressed the alleged lack of disclosure in the Lundquist ’730 patent identified in the Board’s previous denials of institution, arguing in the instant Petition with support in a different declaration of Dr. Pecht that Lundquist would be understood to disclose the missing features. The Board was still not persuaded that the arguments were sufficiently different. In particular, the Board explained:

[Petitioner’s] arguments are not of a different character than those previously presented, nor do they advance a different theory of the prior art or how a particular element of the claims is taught or suggested. Rather, the instant Petition attempts to buttress the same arguments previously considered and found insufficient by the Board, by citing additional facts and testimony.

The Board explained that “permitting petitioners to ‘use our decisions on institution as a roadmap, until a ground is advanced that results in review [is] a practice that would tax Board resources, and force patent owners to defend multiple attacks.’” The Board concluded that Petitioner’s bolstering the previous arguments that were found lacking “does not change the argument sufficiently” to be considered not substantially the same.

The Board then went through the analysis for exercising its discretion in denying institution. The fact that Petitioner was not a party (or alleged to be a real party in interest) to any of the related proceedings weighed “strongly” in favor of not denying institution. However, the fact that the instant Petition was the sixth IPR petition against the ’586 patent weighed in favor of denying institution – without concluding that the number of petitions indicated harassment of Patent Owner. Further, the fact that Petitioner had not been sued, and therefore was not subject to a one year bar, weighed in favor of denial. In particular, should any of the other findings of unpatentability not result in cancellation of the claims, Petitioner could consider re-filing. Finally, the findings of unpatentability in the other proceedings weighed in favor of denying institution, in particular, where Petitioner does not “explain why the Board should invest its finite resources in determining whether certain claims of the ’586 patent are unpatentable, when the same claims have already been found unpatentable in the prior proceedings.”

UBE Maxell Co., Ltd. v. Celgard, LLC, IPR2015-01511

Paper 10: Decision Denying Institution of Inter Partes Review

Dated: January 7, 2016

Patent: 6,432,586

Before: Francisco C. Prats, Donna M. Praiss, and Christopher L. Crumbley

Written by: Crumbley

Related Proceedings: Celgard, LLC v. LG Chem, Ltd. and LG Chem America, Inc., Docket No. 3:14-cv-00043 (W.D.N.C.); Celgard, LLC v. SK Innovations Co., Ltd., Docket No. 3:13-cv-00254 (W.D.N.C.); IPR2013-00637; IPR2014-00524; IPR2014-00679; IPR2014-00680; IPR2014-00692