Takeaway: In order to show that a petition should not be denied under 35 U.S.C. § 325(d) for presenting the same or substantially the same prior art or arguments, a petitioner must show how its arguments and art are different in a meaningful way from the prior challenges.

In its Decision, the Board denied the Petition requesting inter partes review of claim 4 of the ’524 Patent. Petitioner contended that claim 4 is unpatentable as obvious over the combination of Oselin and Schultz. 

There were two previous IPRs filed challenging the ’524 Patent. In IPR2014-00295 (“IPR ’295”), Petitioner challenged claim 4 as obvious over Oselin in combination with references other than Schultz, and the Board did not institute review of claim 4 on those grounds. Petitioner also challenged other claims of the ’524 Patent as obvious over the combination of Oselin and Schultz. In IPR2014-00476 (“IPR ’476”), a different petitioner challenged claim 4 of the ’524 Patent as obvious over the combination of Oselin and Schultz, and the Board instituted review. IPR ’476 is in its final stages of trial.

In its Preliminary Response, Patent Owner argued that the Board should exercise its discretion to deny the Petition under 35 U.S.C. § 325(d), which allows the Board to “take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” In making this determination, the Board has also considered that proceedings should be just, speedy, and inexpensive.

The Board held that it would exercise its discretion and deny the Petition based on §325(d). The Board found that Petitioner is essentially requesting a second chance to address claim 4. Petitioner argued that it has presented new arguments. However, the Board found that the combination of Oselin and Schultz was asserted in IPR ’295 against claims other than claim 4, therefore, Petitioner was aware of the combination when it filed that petition. The Board also noted that the challenge has already been presented in IPR ’476, and Petitioner waited until after the decision to institute IPR ’476 to file its Petition. The Board further stated that Petitioner’s asserted art and arguments are substantially similar to the art and arguments asserted in IPR ’476, and Petitioner has not alleged that its arguments are different in any meaningful way. The Board also rejected Petitioner’s argument that it has presented new testimony because Petitioner did not offer an explanation as to why those exhibits could not have been presented in IPR ’295 or how they make Petitioner’s arguments meaningfully different from the arguments in IPR ’476. Finally, regarding Petitioner’s argument that IPR ’476 could settle at any time, the Board found it unpersuasive, noting Petitioner chose not to file for joinder.

Continental Automotive Systems, Inc. v. Wasica Finance GmbH & Bluearc Finance AG, IPR 2014-01454
Paper 14: Decision Denying Inter Partes Review
Dated: February 13, 2015
Patent: 5,602,524
Before: Rama G. Elluru, Scott A. Daniels, and Jeremy M. Plenzler
Written by: Plenzler
Related Proceedings: Wasica Finance GmbH v. Continental Automotive Systems US, Inc., No. 1:13-cv-01356 (D. Del.); Wasica Finance GmbH v. Schrader International, Inc., No. 1:13-cv-01353 (D. Del.); IPR2014-00295; IPR2014-00476