Unified Patents, Inc. v. PersonalWeb Technologies, LLC and Level3 Communications, LLC, Case IPR2014-00702 (July 24, 2014) (Paper 13)

Takeaway: 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).

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Takeaway:

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.

Derrick Carman

About: Derrick Carman

As an associate in Dorsey’s Patent Group, Derrick works with clients of all sizes to prepare and prosecute patents in the United States and foreign jurisdictions. He draws on his physics research background and time as an in-house attorney at a multinational technology company to provide clients with strategic advice to help them achieve their goals. Derrick regularly evaluates patent rights and technical disclosures and renders opinions with respect to validity, non-infringement, and freedom-to-operate issues. Derrick also has experience with patent disputes in both US District Court and the United States Patent and Trademark Office.

Clint Conner

About: Clint Conner

Clint’s practice focuses on intellectual property with an emphasis on patent litigation, inter partes reviews, and patent enforcement strategies. Although he has remained focused on U.S. intellectual property law throughout his career, he brings an international perspective, having spent nearly five years representing companies in U.S. patent litigation while living and working in Tokyo. Before attending law school, Clint was an engineer for three years with Lucent Technologies’ Bell Labs (now Alcatel-Lucent).