Takeaway: The Board may exercise its discretion in denying institution of a serially-filed petition where the petitioner does not explain how the newly-asserted grounds add substantively to or can be meaningfully distinguished from the grounds of a previous petition.

In its Decision, the Board exercised its discretion under 35 U.S.C. §§ 315(d), 325(d) in denying institution of inter partes review of the ’115 patent. In particular, the Board found that Petitioner failed to show that any grounds asserted in the instant Petition “adds substantively to the grounds on which [the Board] instituted inter partes review in Case IPR2015-00470.”

The ’115 patent “relates to a method and system ‘for delivering interactive links for presenting applications and second information at a client computer from remote sources in a network-configured computer processing system.’” Petitioner challenged all claims in the ’115 patent asserting eight different grounds of unpatentability.

The Board noted the standard for claim construction in inter partes review proceedings for an unexpired patent, but determined that no express construction is needed because the Board’s Decision does not depend on the construction of any claim language.

Patent Owner argued the Board should deny the Petition because of its redundancy in view of IPR2015-00470 (“the ’470 IPR”). The Board instituted trial in the ’470 IPR as to the same challenged claims as in the instant Petition, but based upon different combinations of prior art references. The Board compared the asserted grounds in the two Petitions and found that Petitioner had not sufficiently explained how any of the asserted grounds in the instant Petition “adds substantively to the grounds” on which trial was instituted in the ’470 IPR. For instance, in the ’470 IPR, Petitioner challenged one set of claims based on the Frese reference alone, but challenged the same set of claims based on Frese in various combinations with Riggins and Gish. However, the Board found that no explanation was provided as to how Riggins or Gish “supplies a claimed feature which is absent in Frese.” According to the Board, “Petitioner has not identified a meaningful distinction between the combinations of references in the present Petition and in Case IPR2015-00470.” Thus, the Board denied institution pursuant to its authority under 35 U.S.C. §§ 315(d), 325(d).

E*TRADE Financial Corp. v. Droplets, Inc., IPR2015-00471
Paper 18: Decision Denying Institution of Inter Partes Review
Dated: July 6, 2015
Patent: 8,402,115 B2
Before: Linda M. Gaudette, Michael R. Zecher, and Scott A. Daniels
Written by: Gaudette
Related Proceedings: IPR2015-00470; CBM2014-00123; CBM2014-00124; Droplets, Inc. v. E*TRADE Financial Corp., No. 1:12-cv-02326-CM (S.D.N.Y. April 7, 2014)