Takeaway: An argument raised by a patent owner in one proceeding could create a substantive difference between two related proceedings, and therefore, could also negate a finding that one of the two proceedings is redundant.

In its Decision, the Board denied Patent Owner’s request for rehearing by an expanded panel of the Board’s Decision to Institute inter partes review. Initially, the Board had denied institution on redundancy grounds in light of the IPR2014-00552 proceeding. In particular, the Petition in the instant proceeding was found to not “add substantively to the grounds on which [the Board] instituted inter partes review in the related proceeding.” However, on rehearing, the Board decided to institute trial and then denied Patent Owner’s Request for Rehearing.

After the Board initially denied institution, Patent Owner asserted in the related IPR2014-00552 proceeding that the Webster reference did not constitute prior art pursuant to 35 U.S.C. § 103(c). Petitioner requested rehearing of the Decision denying institution, which the Board granted because “‘Patent Owner’s pursuit of a 35 U.S.C. § 103(c) defense against Webster creates a substantive difference’ between the grounds in the two proceedings.” The instituted grounds in the instant proceeding involved grounds that did not depend upon references subject to disqualification.

Patent Owner requested an expanded panel. The Board noted that parties “are not permitted to request, and panels do not authorize, panel expansion.” Discretion to expand a panel is with the Chief Judge who may do so in situations where “the issue is one of conflict with an authoritative decision of our reviewing courts or a precedential decision of the Board,” or “the issue raises a conflict regarding a contrary legal interpretation of a statute or regulation.” The Board found that the present situation did not “fall within these parameters.”

Turning to the substance of Patent Owner’s Rehearing Request, Patent Owner argued that it was being punished for having filed a preliminary response in the related proceeding. The Board disagreed, finding that the challenge to Webster as constituting prior art made it apparent “that the panel’s initial disposition of the Petition would have to be revisited.” Therefore, it was not the filing of the preliminary response that was the “triggering event,” but it was rather raising the Section 103(c) argument. The Board found it appropriate to revisit its Decision denying institution because it resulted from “the Board’s effort to manage the number of instituted grounds” rather than some defect in the Petition. Therefore, the Board denied Patent Owner’s Request for Rehearing.

Marvell Semiconductor, Inc. v. Intellectual Ventures I LLC, IPR2014-00553
Paper 38: Decision on Patent Owner’s Request for Rehearing
Dated: May 12, 2015
Patent: 6,754,195 B2
Before: Thomas L. Giannetti, James A. Tartal, and Patrick M. Boucher
Written by: Boucher
Related Proceeding: IPR2014-00552