The Board has broad discretion to deny institution to the extent that an IPR petition presents the same or substantially the same prior art or arguments previously presented to the Office (such as in the context of prior third party IPR proceedings).
Summary (Informative) :
Petitioner Unified Patents, Inc. (“Unified”) filed a petition challenging claims 1-4, 29-33, 35, and 41 of U.S. Pat. No. 5,978,791 (“the ’791 Patent”) as unpatentable in light of U.S. Pat. No. 5,649,196 (“Woodhill”). The petition identified three other IPR petitions that challenged the ’791 Patent previously filed by third parties: (1) EMarisa Conlon Corp. and VMware, Inc. v. PersonalWeb Techs., LLC, IPR2013-00082 (PTAB held claims 1–4, 29–33, and 41 unpatentable as being anticipated by, or obvious over, Woodhill, and the PTAB’s decision was pending appeal to the Federal Circuit); (2) NetApp, Inc. v. PersonalWeb Techs LLC, IPR2013-00319 (PTAB denied the Petition as to claims 1–3, 29, and 35); and (3) Rackspace US, Inc. v. PersonalWeb Techs. LLC, IPR2014-00057 (PTAB instituted IPR as to claims 1–4, 29–33, 35, and 41 as being anticipated by, or obvious over, Woodhill). In addition, Unified’s petition indicated that the ’791 patent is the subject of a pending ex parte reexamination.
Patent Owner, PersonalWeb, argued that Unified’s petition should be denied because the same or substantially the same prior art or arguments previously were presented to the Office.
The Board agreed with PersonalWeb and denied institution. The Board noted that all but one of the claims challenged by Unified were addressed in IPR2013-00082 and that all of the claims challenged by Unified were the subject of IPR2014-00057. While acknowledging that its decision would deny Unified the opportunity to submit its own arguments and evidence with respect to the challenged claims, the Board concluded that considerations of efficient administration of the Office under 35 U.S.C. § 316(b) and the likelihood of invalidation of the challenged claims in the earlier proceedings favored denying the petition.