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.

Petitioner had sought inter partes review of claims 1, 10, and 11 of the ’524 patent. The grounds asserted by Petitioner included: anticipation of claims 1, 10, and 11 under 35 U.S.C. § 102 by Oselin; obviousness of claim 1, 10, and 11 under 35 U.S.C. § 103 over Oselin; and obviousness of claim 11 under 35 U.S.C. § 103 over Oselin and Nowicki. Petitioner had previously made the same challenges in IPR ’476, and the Board instituted for claims 1 and 10, but not claim 11. Also, in IPR ’295, the Board instituted an inter partesreview of claim 11 based on obviousness over Oselin. Oral hearing has been completed in each of IPR ’476 and IPR ’295.

Patent Owner argued in its Preliminary Response that the Board should exercise its discretion to deny the Petition under 35 U.S.C. § 325(d). Based on its review of the Petition, Preliminary Response and supplemental briefing, the Board decided to exercise its discretion to deny institution. Petitioner argued that the Petition, especially with regard to the challenge to claim 11, is not redundant, because claim 11 was only instituted in IPR ’295 as obvious over the combination of Oselin and Nowicki, and not Oselin alone. The Board noted that Petitioner did not address any differences between the review of claim 11 instituted in IPR ’295 and the challenge to claim 11 in the instant Petition based on Oselin alone. The Board also noted that Petitioner did not offer any explanation as to why the arguments in the instant Petition could not have been made in IPR ’476.

Petitioner further argued that “if institution is denied, then claim 11’s validity will be disputed (at a much greater cost) in the co-pending District Court litigation.” However, the Board noted that Petitioner failed to address the delay caused by any decision in this case being made about a year after the other pending IPRs addressing the same claims over the same references. For at least the above reasons, the Board decided to exercise its discretion under 35 U.S.C. § 325(d) to deny the Petition and decline to institution inter partes review with respect to the challenged asserted in the Petition, “because it presents merely ‘the same or substantially the same prior art or arguments’ already presented” to the Board.

Schrader-Bridgeport International, Sensata Technologies Holdings N.V., and SI International (Topco), Inc. v. Wasica Finance GmbH & BlueArc Finance AG, IPR2015-00272

Paper 13: Decision Denying Institution of Inter Partes Review

Dated: June 1, 2015

Patent: 6,602,524

Before: Rama G. Elluru, Scott A. Daniels, and Jeremy M. Plenzler

Written by: Plenzler

Related Proceedings: Wasica Fin. GmbH v. Cont’l Auto. Sys. US, Inc., Case No. 1-13-cv-01356 (D. Del.); Wasica Fin. GmbH v. Schrader Int’l, Inc., Case No. 1-13-cv-01353 (D. Del.); IPR2014-00295; IPR2014-01454IPR2014-00476