In almost two-and-a-half years of IPR practice, the Board has been more than willing to reconsider arguments that have previously been presented to the Patent Office, via examination, reexamination, or reissue. In fact, it’s news when the Board invokes 35 USC §§ 315(d) or 325(d) to prevent a challenge brought in a Petition. To that end, we note herein how the Board invoked § 315(d), in IPR2014-00783, Customplay, LLC, v. Clearplay, Inc., to deny a petition because it relied on prior art that could have been presented in an earlier petition filed by the same Petitioner regarding the same patent.
In a separate IPR proceeding (IPR2014-00484), Patent Owner challenged the same claims of the patent-at-issue. Decision at 6. The Board instituted review in that prior case, but not for all claims requested by the Petitioner. Id. In the later petition, the Petitioner relied on new arguments concerning the previously-presented art, and a new prior art reference, to attack some of the claims for which review was previously denied. Decision at 8.
Section 325(d) allows the Board to reject a petition where the “same or substantially the same prior art or arguments were previously presented to the [Patent] Office.” Here, Petitioner argued that it could not have reasonably raised its current arguments in the first petition because that earlier petition “was predicated on claim constructions and interpretations that are broader than the claim constructions and interpretations” that the Board applied in deciding to institute review. Decision at 9.
The Board rejected Petitioner’s second petition. As to the new arguments based on previously-presented art, the Board stated that a “decision to institute review on some claims in a first inter partes review, however, should not act as a how-to guide for the same Petitioner filing a second petition for inter partes review challenging claims that it unsuccessfully challenged in the first petition or claims that it reasonably could have challenged in the first petition.” Decision at 9. The Board also rejected the arguments that were based on newly-added prior art, because Petitioner did not argue the new prior art added anything over the previously-presented art, and because the Petitioner did not argue that the newly-added prior art was unavailable to it when it filed the first petition. Decision at 12. Accordingly, the petition was denied. Decision at 13. See also Conopco, Inc. dba Unilever v. The Procter & Gamble Company, IPR2014-00628.
[UPDATE – It is worth noting that a different panel of the Board came to a different conclusion in Flir Systems, Inc. v. Leak Surveys, Inc., IPR2016-00065, wherein the Board found that, despite the fact that there was considerable overlap in the art considered in an earlier and later Petition, because the manner in which the art was combined differs, the second petition was not barred.]