Dell Inc. v. Elecs. & Telecomms. Research Inst.

Addressing the issue of estoppel and joinder, the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB) denied a petitioner’s challenge, finding the petitioner was estopped from requesting the additional review based on a previous decision. Dell Inc. v. Elecs. & Telecomms. Research Inst., Case No. IPR 2015-00549 (PTAB, Mar. 26, 2015) (Anderson, APJ). The PTAB designated this decision as representative, meaning it is intended to provide guidance to other litigants.

In January 2015, the petitioners requested an inter partes review (IPR), challenging claims of a patent directed to computer network systems. The patent owner waived its right to file a preliminary response and did not oppose a joinder of this proceeding with another proceeding challenging the same patent. In each proceeding, the petitioner argued the claims of the patent were obvious in view of two pieces of prior art.

The PTAB concluded the petitioner was estopped under 35 U.S.C. § 315(e)(1) from challenging certain of the claims through an IPR on the grounds that the challenge to those claims could have been raised during a prior proceeding. Previously, the same petitioner failed in challenging the patent using the same two pieces of prior art (IP Update, Vol. 18, No. 3). Although the petitioner presented different arguments in the current IPR, the PTAB explained that differences regarding how references are asserted have no weight on whether the grounds could have been raised in the previous IPR, and therefore the petitioner was estopped from a second attempt to challenge the patent.

As for the remaining claims, the PTAB concluded that § 315(e)(1) did not apply because these claims were not part of the original IPR. However, absent joinder to a pending proceeding, this challenge would be barred by § 315(b) because the petition was filed more than one year after the date on which the petitioner was served a complaint. The PTAB has discretion (under § 315(c)) as to whether to grant joinder. Notwithstanding that the patent owner did not oppose the joinder, the PTAB concluded the petitioner had not shown that joinder would be appropriate on the subset of remaining claims, and that such a partial joinder would unnecessarily complicate an IPR that had already been subject to a prior joinder. Therefore, joinder was denied, and the petition was barred under § 315(b).