Dell, Inc. v. Electronics and Telecommunications Research, IPR2015-00549 (Patent Tr. & App. Bd. 2015)

In a recent inter partes review (IPR) decision, Dell, Inc., et al. v. Electronics and Telecommunications Research, (IPR2015-00549, Paper No. 10, entered March 26, 2015) (“the ‘549 IPR”), the Patent Trial and Appeal Board (PTAB) denied a petition to institute the IPR based on estoppel.  The PTAB denied the petitioner’s motion to institute the ‘549 IPR of Claims 1-9 of U.S. Patent No. 6,978,346 (“the ‘346 patent”) as being obvious under 35 U.S.C. § 103 over prior art references to Mylex and Hathorn.  IPR ‘549 at 2.  In addition, the PTAB denied the petitioner’s motion to join the inter partes review with a concurrent proceeding, VMWare, Inc. v. Electronics and Telecommunications Research Institute, Case IPR 2014-00901 (“the ‘901 IPR”).  Id. at 2.

As background, the concurrent ‘901 IPR was instituted on December 11, 2014 and involved the ‘346 patent, while the petition for the ‘549 IPR was filed on January 8, 2015.  Id. at 3.  The ‘901 IPR was instituted on the grounds that claim 1-9 were obvious under 35 U.S.C. § 103 over two prior art references to Mylex and Hathorn.  Id.  Both Mylex and Hathorn were also asserted against the ‘346 patent in Dell, Inc., et al. v. Electronics and Telecommunications Research, Case IPR 2013-00635 (“the ‘635 IPR”).  Id.   The petitioner in the ‘549 IPR and the ‘635 IPR are the same. Id.

The ‘635 IPR was instituted on March 20, 2014 on the grounds that claims 1-3 and 5-8 were anticipated under 35 U.S.C. § 102(b) by Hathorn.  IPR ‘549 at 3.  The PTAB denied the petition of all other grounds in the ‘635 IPR, including: claims 1-3 and 8 as obvious under Section 103 over Weygant and Mylex; claim 4 and 9 as obvious under Section 103 over Weygant, Mylex, and Serviceguard; and claims 5-7 as obvious under Section 103 over Weygant, Mylex and ANSI.  Id.  A final written decision was issued in the ‘635 IPR on February 27, 2015.  Id.  Based on the Final Written Decision in the ‘635 IPR, the PTAB denied the petition to institute the ‘549 IPR based on estoppel.  Id. at 2.

The estoppel provision 35 U.S.C. § 315(e)(1) states the following:

(e) Estoppel. –

(1) Proceedings before the office. – The petitioner in an inter partes review in a patent under this chapter that results in a final written decision under section 318(a), or the real party in interest or privy of the petitioner, may not request or maintain a proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that inter partes review.

In its analysis, the PTAB explained that the petitioners in the ‘549 IPR and the ‘635 IPR are the same and noted that a Final Written Decision had been rendered in the ‘549 IPR.  IPR ‘549 at 4.  Further, the PTAB held that the petitioner could have raised the grounds raised in the ‘549 IPR in the ‘635 IPR.  Id.

The PTAB referred to the legislative history of the AIA to determine the meaning of “could have raised.”  Specifically, the PTAB quoted Senator Grassley, who stated that what could have been raised includes “prior art which a skilled searcher conducting a diligent search would reasonably could have been expected to discover.”  Id.  The PTAB noted that the prior art references in both the ‘549 IPR and the ‘635 IPR are the same, so no determination of what “reasonably could have been expected to discover” was necessary.

The petitioner knew of both the Mylex and Hathorn references, which were used as prior art against the ‘346 patent in the ‘635 IPR.  Id. at 5.  While the petitioner believed the prior art reference to Hathorn was anticipatory, the PTAB held that the petitioner could have reasonably asserted that claims 1-9 were obvious under Section 103 over Mylex and Hathorn, since both prior art references were used in the ‘635 IPR petition.  Id. at 5 and 6.  Thus, the PTAB denied the institution of the claims 1-3 and 5-8.  Id. at 6.

The PTAB further determined that, since there was no final written decision in the ‘635 IPR for claims 4 and 9, this ground could be joined with the ‘901 IPR, so long as this ground was not precluded for any other reasons.  Id.  However, under 35 U.S.C. § 315(b), an inter partes review will not be instituted if the request is filed more than one year after the date on which the petitioner or real party in interest is served with a complaint in a patent infringement suit.  Id. at 7.  In this instance, a complaint was filed alleging infringement of the ‘346 patent was served on the petitioner more than one year prior to the petition for inter partes review.  Id.

The PTAB also denied the petitioner’s request for joinder of claims 4 and 9 with the ‘901 IPR.  Id. at 2.  In its decision, the PTAB relied on its discretionary ability under 35 U.S.C. § 315(c) to deny a petition for inter partes review. Id.  To join only claims 4 and 9 would cause the case to proceed differently depending on the party, which the PTAB determined would necessarily complicated the ‘901 IPR.  Id. at 7 and 8.  Accordingly, the PTAB denied the petition for joinder of claims 4 and 9 with the ‘901 IPR.

The PTAB’s decision raises several issues that petitioners should address when requesting the institution of an inter partes review.  For example, even if the petitioner believes the grounds for instituting based on anticipation by a prior art reference are strong, the petitioner should include any grounds based on obviousness using the same prior art.  Otherwise, the petitioner may lose the opportunity to raise these issues in the future.  The petitioner should also file any additional IPR petitions prior to the written decision and prior to one year from being served with a patent infringement suit to avoid the denial of institution based on estoppel.  Going forward, it will also be interesting to see if petitioner’s file multiple petitions for inter parte review and using similar references and if the PTAB institutes these decisions and allows these petitions to be joined.