Takeaway: Where a petition presents the same prior art and substantially the same arguments as a prior petition, the Board may exercise its discretion and deny institution of inter partes review.

In its Decision, the Board denied institution of inter partes review (“IPR”) of claims 1-53 of the ’041 patent. The Board stated that the Petition advanced the same challenges to the ’041 patent as the IPR2014-01177 proceeding (“the ’01177 proceeding”) in which the board declined to institute IPR.

The ’041 patent relates to a storage router and storage network that provides virtual local storage on remote storage devices. Petitioner asserted claims 1-53 of the ’041 patent as obvious based on the following challenges: (1) CRD-5500 User Manual, CRD-5500 Data Sheet, and Smith; (2) Kikuchi and Bergsten; and (3) Bergsten and Hirai.

Patent Owner argued that the Board should exercise its discretion and dismiss the present Petition as an attempt at a “second bite at the apple.” The Board concluded that the Petition presents the same prior art and substantially the same arguments previously presented in the ’01177 proceeding. The Petition was submitted a month after issuance of the decision in the ’01177 proceeding. According to the Board, the Petition makes clear that it was guided by and received the benefit of seeing the decision in the ’01177 proceeding. Thus, the Board exercised its discretion in denying institution of IPR.

NETAPP INC. v. CROSSROADS SYSTEMS, INC., IPR2015-00776
Paper 12: Decision on Institution of Inter Partes Review
Dated: September 8, 2015
Patent: 7,934,041
Before: Neil T. Powell, Kristina M. Kalan, J. John Lee, and Kevin W. Cherry
Written by: Powell
Related proceedings: Crossroads Systems, Inc. v. NetApp, Inc., Case No. 1-14-cv-00149 (W.D.Tex.); IPR2014-01177; IPR2014-01463