Takeaway: The fact that a petitioner uses a decision denying a petition as guidance in filing a second petition challenging the same claims on the same grounds weighs in favor of the Board exercising its discretion in denying the petition under 35 U.S.C. § 325(d).

In its Decision, the Board denied institution of inter partes review of any of the challenged claims (1-28) of the ’311 Patent. The ’311 Patent relates to a storage router and method for providing virtual local storage on remote Small Computer System Interface (“SCSI”) storage devices to Fibre Channel (“FC”) devices.

The Board discussed 35 U.S.C. § 325(d), which allows the Board to reject a petition because “the same or substantially the same prior art or arguments previously were presented to the office.” The Board noted that, in IPR2014-01233, Petitioner filed a petition challenging the same claims on the same grounds. The Board declined to institute trial on that petition because it did not address adequately certain limitations of the independent claims and improperly relied upon incorporation by reference of explanation presented in the accompanying declaration. In the Petition in the instant proceeding, Petitioner included the explanation from the supporting declaration and addressed the claim limitations separately.

The Board found that Petitioner is asking for a second chance at arguing unpatentability of the same claims that were challenged in the prior petition on the same combinations. The Board also found that Petitioner’s use of the prior decision on institution as guidance to improve the present Petition weighs in favor of the Board exercising its discretion to the deny the Petition. Therefore, the Board denied institution based on § 325(d).

NetApp Inc. v. Crossroads Systems, Inc., IPR2015-00772

Paper 12: Decision Denying Institution of Inter Partes Review

Dated: September 3, 2015

Patent 7,987,311 B2

Before: Neil T. Powell, Kristinia M. Kalan, J. John Lee, and Kevin W. Cherry

Written by: Powell

Related Proceedings: Crossroads Systems, Inc. v. Net App, Inc., No. 1:14-cv-00149 (W.D. Tex.); IPR2014-01177; IPR2014-01197; IPR2014-01207; IPR2014-01209; IPR2014-01226; IPR20174-01463; IPR2014-01544; IPR2015-00773; IPR2015-00776; IPR2015-00777; IPR2015-00822; IPR2015-00825; IPR2015-00852; IPR2015-00854; IPR2015-01063; IPR2015-01064; IPR2015-01066