Takeaway: If a petitioner relies upon the same arguments that were found unpersuasive in a final written decision in a prior IPR of a similar patent, then the Board may use its discretion to deny institution.

In its Decision, the Board denied institution of inter partes review of any of the challenged claims (1-30) of the ’162 Patent. The ’162 Patent is directed to lightweight fabrics that provide protection from heat, flame, and electrical arc.

The Board began with claim interpretation, stating that the claims are given their broadest reasonable construction in light of the specification. Petitioner argued that the claims use the same terminology as the claims of the ’639 Patent, which is the subject of an instituted IPR, and that the same interpretations should apply. Patent Owner agreed and the Board adopted the prior construction.

The Board then discussed institution, stating that the statute allows denial of some or all grounds of unpatentability. The Board noted that whether the challenged claims would have been obvious over the combination of Radwanski, Rowan, and Murch was also reviewed in the prior IPR where the Board determined in a final written decision that Petitioner had not shown by a preponderance of the evidence that the challenged claims of the ’639 Patent are unpatentable. The Board found that the ’162 and ’639 Patents have identical descriptive content. The Board found that Petitioner was relying on the same arguments that the Board found previously were not persuasive, therefore, it would not be efficient to institute trial on that ground.

The Board then turned to the second ground of unpatentability – obviousness over Kulper and Rowan. Patent Owner argued that Kulper “is not directed to a single-layer, stitchbonded, non-woven fabric” and that Rowan teaches away from the claimed invention. Petitioner argued that a person of ordinary skill in the art would have combined the teachings of Kulper and Rowan because they are similar inventions. However, the Board found this was not enough of a showing of an articulated reasoning with rational underpinnings as to why one of ordinary skill would modify the teachings of Kulper in view of Rowan to arrive at the claimed invention.

Tietex International, Ltd. v. Precision Fabrics Group, Inc., IPR2015-01671

Paper 7: Decision Denying Institution of Inter Partes Review

Dated: February 11, 2016

Patent 8,796,162 B2

Before: James T. Moore, Grace Karaffa Obermann, and Jo-Anne M. Kokoski Written by: Kokoski

Related Proceedings: Precision Fabrics Group, Inc. v. Tietex International, Ltd., No. 1:14-cv-00650 (M.D.N.C.); Precision Fabrics Group, Inc. v. Tietex International, Ltd., No. 1:13-cv-00645 (M.D.N.C.); IPR2014-01248 (U.S. Patent No. 8,501,639 B2)