Takeaway: The Board may deny institution when Petitioner does not allege that the applied art was not known or available to it at the time of a prior related proceeding regarding the same patent.

In its Decision, the Board denied institution of inter partes review of claim 21 of the ’228 because Petitioner had failed to allege that the applied art was not known or available to Petitioner at the time of a prior related proceeding of the ’228 patent. The Board also denied Petitioner’s request for joinder of IPR2014-00892 (IPR ’892).

The ’228 patent relates to a data communications system containing multiple modems that use different types of modulation in a network. Petitioner asserted that claim 21 of the ’228 patent is obvious over the combination of Boer and Siwiak. Petitioner had alleged unpatentability of claims 1-3, 5, and 10-21 of the ’228 patent over the combination of APA and Boer in IPR ’892.

Under 35 U.S.C. § 325(d), the Board exercised its discretion and declined to reach the merits of Petitioner’s obviousness challenge to claim 21 over Boer and Siwiak. Petitioner failed to allege that Siwiak was not known or available to it at the time of filing IPR ’892. On the contrary, Petitioner had applied Siwiak as the basis of rejection of claim 21 of the ’228 patent in another petition filed on the same day as IPR ’892 (IPR2014-00889).

The Board concluded that giving Petitioner a second chance would not “secure the just, speedy, and inexpensive resolution of every proceeding” under 37 C.F.R. § 42.1(b). Further, the Petitioner merely presented the same or substantially the same prior art or arguments that were presented in IPR ’892.

SAMSUNG ELECTRONICS CO. LTD., SAMSUNG ELECTRONICS AMERICA, INC., SAMSUNG TELECOMMUNICATIONS AMERICA, LLC, AND SAMSUNG AUSTIN SEMICONDUCTOR, LLC v. REMBRANDT WIRELESS TECHNOLOGIES, LP

IPR2015-00555

Paper 20: Decision Denying Institution of Inter Partes Review

Dated: June 19, 2015

Patents: 8,457,228

Before: Jameson Lee, Howard B. Blankenship, and Justin Busch

Written by: Blankenship

Related proceedings: Rembrandt Wireless Technologies, LP v. Samsung Electronics Co., No. 2:13-cv-00213 (E.D. Tex. 2013); Samsung Electronics Co. v. Rembrandt Wireless Technologies, LP, IPR2014-00889; Samsung Electronics Co. v. Rembrandt Wireless Technologies, LP , IPR2014-00890; Samsung Electronics Co. v. Rembrandt Wireless Technologies, LP , IPR2014-00891; Samsung Electronics Co. v. Rembrandt Wireless Technologies, LP , IPR2014-00892; Samsung Electronics Co. v. Rembrandt Wireless Technologies, LP, IPR2014-00893; and Samsung Electronics Co. v. Rembrandt Wireless Technologies, LP, IPR2014-00895.