Takeaway: An unsuccessful petitioner cannot use the Board’s decision not to institute as a road map to craft a subsequent petition, or review of the subsequent petition will be denied.

In its Decision, the Board determined that the same or substantially the same prior art or arguments were presented and considered by the Board as to the unpatentability of challenged claims 1-24 of the ’756 Patent, which relates to a control system and method for raising and lowering window shades. The Board, therefore, denied institution of inter partes review.

In a prior petition, Petitioner had asserted that the claims in the ’756 Patent are anticipated by Toti, and that the claims would have been obvious based on Gertzon, Kuhar, Toti, Debs, and Todd. The Board stated that the § 102 asserted prior art and substantive arguments from the prior petition are the same as the § 102 asserted prior art and substantive arguments in the Petition in this proceeding. The Board also found that the § 103 asserted prior art and substantive arguments in the prior petition are substantially the same as the § 103 asserted prior art and substantive arguments in the Petition in this proceeding. The Board also noted that the declarations submitted in both proceedings contain the same testimonial evidence.

Pursuant to 35 U.S.C. § 325(d), the Board has discretion to deny a petition that raises substantially the same prior art or arguments as previously presented to the Office. The Board noted that there were nuanced difference between the prior petition, which was denied inter partes review, and the instant Petition, those differences are insubstantial. The Board also cited to ZTE Corp. v. ContentGuard Holdings, Inc., No. IPR2013-00454 (PTAB Sept. 25, 2013), for the proposition that the first Board decision “should not act as an entry ticket, and a how-to guide, for the same petitioner . . . for filing a second petition to challenge those claims which it unsuccessfully challenged in the first petition.” The Board determined that is exactly what has happened in this case, and denied review of the Petition on those grounds.

Whole Space Industries Ltd. v. Zipshade Industrial (B.V.I.) Corp., IPR2015-01632 Paper 10: Decision Denying Institution of Inter Partes Review Dated: January 29, 2016 Patent 8,245,756 B2 Before: Phillip J. Kauffman, Meredith C. Petravick, and Barry L. Grossman Written by: Grossman Related Proceedings: Zipshade Industrial (B.V.I.) v. Lowe’s Home Centers LLC, et al., No. 2:14-cv-05934 (C.D. Cal.); IPR2015-00488