By Matthew L. Cutler, Principal
The Board has a well-established reputation for denying grounds in a petition that are deemed redundant to other instituted grounds. In view of that reputation, Petitioners are adapting, seeking to file multiple petitions, putting grounds that might otherwise be deemed redundant into a separate petition in the hopes that they will be considered in that context. The Board, however, is not backing down, finding on occasion that grounds in one petition may be denied as redundant in view of grounds in a separate petition. That situation arose in CoreLogic, Inc. v. Boundary Solutions, Inc., IPR2015-00219, wherein the Board denied certain grounds in the IPR petition as redundant in view of grounds that were instituted in a completely separate IPR.
In coming to this conclusion, the Board remarked that “Petitioner makes no attempt to distinguish the grounds asserted against the claims of the ‘352 patent in this case from those asserted in [the co-pending IPRs].” Id. at 11. Further, the Board pointed out that instituting a trial in an IPR proceeding is permissive, in the discretion of the Patent Office. In short, because Petitioner did not show, and the Board was not convinced, that any additional obviousness grounds add substantively to the already-instituted grounds (albeit from a different petition), the Board denied certain grounds in the ‘219 proceeding.
As such, Petitioners are warned that the redundancy rejections from the Board may not be overcome simply by placing the additional grounds in a separate petition. Instead, Petitioners must be diligent to explain why each additional ground is necessary and adds substantively to the grounds before the Board, even over grounds presented in completely different petitions.