Takeaway: The appropriate mechanism for a petitioner to assert grounds upon which inter partes review has already been instituted is a request for joinder under 35 U.S.C. § 315(c), as opposed to a new petition based on substantially the same prior art or arguments as previously presented.

In its Decision, the Board denied the Petition as raising “substantially the same prior art or arguments previously presented to the Office” under 35 U.S.C. § 325(d). Thus, no trial was instituted. The Board also declined sua sponte to join Petitioner to related proceeding IPR2014-00728.

The Board had previously instituted trial with respect to certain claims of the ‘585 patent in IPR2014-00728, which had been filed by “Petitioner’s co-defendant/co-respondent, Silicon Laboratories, Inc. (‘Silicon Labs’).” Petitioner then sought inter partes review of claims 1-3, 5, 10, 13, 14, and 16-19 of the ‘585 patent in the instant proceeding based on various anticipation and obviousness grounds.

The Board concluded that “[e]ach of the grounds advanced by Petitioner was previously considered by the Board in the related proceeding . . . IPR2014-00728[.]” As characterized by the Board, “Petitioner’s arguments differ only in minor respects from the arguments considered in the related proceeding.” In reaching this conclusion, the Board noted that “Petitioner acknowledges that the instant Petition ‘is substantially identical to the Petition of [the related proceeding].’” Despite the fact that “Petitioner [had supported] its Petition with a declaration of a different witness . . . than relied on by Silicon Labs in the related proceeding,” the Board [agreed] with Patent Owner that ‘the declaration is substantially identical to the [related proceeding’s] declaration.’” In view of these points, the Board concluded that the same or substantially the same prior art or arguments had previously been presented to the Office in IPR2014-00728.

The Board concluded by indicating that “[t]he statutory structure of the America Invents Act includes a more appropriate mechanism for petitioners to assert grounds upon whichinter partes review has already been instituted—a request for joinder under 35 U.S.C. § 315(c).” But because “Petitioner [had] not filed such a request, and, in light of the advanced stage of the related proceeding, [the Board declined] sua sponte to join Petitioner to [IPR2014-00728].”

MaxLinear, Inc. v. Cresta Technology Corporation, IPR2015-00591

Paper 9: Decision Denying Institution of Inter Partes Review

Dated: June 15, 2015

Patent 7,075,585 B2

Before: Phillip J. Kauffman, Gregg I. Anderson, and Patrick M. Boucher

Written by: Boucher

Related Proceedings: Cresta Technology Corp. v. Maxlinear, Inc., 1:14-cv-00079-RGA (D. Del.); Certain Television Sets, Television Receivers, Television Tuners, and Components Thereof, Inv. No. 337-TA-910 (ITC); and Silicon Labs., Inc. v. Cresta Tech. Corp., Case IPR2014-00728