Takeaway: A decision to institute an IPR is not a “final written decision” that estops a Petitioner from seeking IPR on additional grounds.

The Board held a conference call to discuss scheduling in this IPR and two related IPRs. In this IPR, by agreement of the parties, Patent Owner is submitting its preliminary response in two parts. Patent Owner submitted the first part a few days before the conference call. In its Order, the Board addressed several arguments raised by Patent Owner in the first part of the preliminary response.

The Board first addressed Patent Owner’s argument that Petitioner “improperly used the Board’s institution decision” in two other IPRs “as a ‘road map’ in presenting its petition” in this IPR. The Board rejected Patent Owner’s argument, noting that it has “discretion as to whether an inter partes review should be instituted or not instituted based on possible use of the same or substantially the same prior art previously presented” in the other IPRs. Here, the Board agreed with Patent Owner that the cited art “considerably overlaps” but found that “the manner in which the prior art is combined differs.” The Board then stated that “[a]ssuming arguendo that Petitioner used our previous decision as a “Road Map,” and no other regulatory or statutory hurdles exist, there is nothing inherently wrong in doing so provided a second petition is filed prior to any time bar.” After determining that this IPR (if instituted) would not require significantly more work from the Board or the parties, the Board decided to “exercise [its] discretion to further consider the petition in this particular case notwithstanding Petitioner may have used [its] prior decision as a ‘Road Map.’”

Next, the Board considered whether the petition presents redundant grounds. The Board determined that it would analyze possible redundancy after Patent Owner submits the second part of its response.

The Board then addressed Patent Owner’s argument that Petitioner is “estopped” from seeking an IPR in light of the Board’s decision to institute the other IPRs. The Board first noted that “Patent Owner’s basis for estoppel appears to be 35 U.S.C. § 315(e)(1),” which “estops a petitioner from raising in the Office any ground of unpatentability that was raised or could have been raised in an IPR after a final written decision is entered.” The Board stated that no final written decision has been entered in the other IPRs and thus concluded that “§ 315(e)(1) has no applicability in this IPR at this stage of the proceeding” and that “[e]stoppel is not a ground for declining to institute an IPR in this case.”

Finally, the Board considered Patent Owner’s argument that “Petitioner is statutorily time barred because a fee was not timely paid.” According to the Board, the USPTO records indicate that Petitioner challenged 16 claims but paid for only 15 claims when it filed the petition and that the fee for the additional claim was paid after a one-year time bar from service of a complaint against Petitioner became applicable. The Board advised Petitioner during the conference call that it could withdraw a dependent claim from its challenge, which Petitioner indicated it would do; however, Patent Owner maintained that it was too late to withdraw a claim. The Board authorized Patent Owner to file a paper addressing the “fee issue” and authorized Petitioner to file a response. The Board stated that it would defer further consideration of the fee issue to a further date, after both papers are filed.

FLIR Systems, Inc. v. Leak Surveys, Inc., IPR2015-00065
Paper 13: Post Conference Call Order – Conduct of Proceedings 
Dated: December 16, 2014 
Before: Fred E. McKelvey, James T. Moore, and Trevor M. Jefferson 
Written by: McKelvey
Related Proceedings: IPR2014-00411 and IPR2014-00434