Takeaway: The Board may deny a petition asserting grounds that had already been denied in a previous proceeding using its discretion under 35 U.S.C. § 325(d), and not even consider the grounds on their merits where additional explanation had been provided.

In its Decision, the Board denied institution of inter partes review and denied Petitioner’s Motion for Joinder. Petitioner had filed a motion requesting joinder to IPR2014-00519, in which the Board instituted inter partes review from some claims, but denied review of other challenged claims. The ’580 patent relates to “a data communications system in which a plurality of modulation methods are used to facilitate communication among a plurality of modem types.”

Petitioner asserted similar grounds in the petition in this proceeding as previously denied in the IPR2014-00519 proceeding, but with additional explanation. The Board did not reach the merits of Petitioner’s new argument and instead exercised its discretion under 35 U.S.C. § 325(d) to deny institution of inter partes review in this proceeding. The Board stressed that Petitioner is requesting, essentially, a second chance to address claims that were not instituted by merely presenting additional reasoning to support the assertion of unpatentability over the same prior art submitted in the earlier proceeding. Because second chances tie up the Board’s limited resources, the Board must be mindful when deciding whether to grant such a chance. In previous cases, the Board had granted joinder when (1) a new product was launched, leading to a threat of new assertions of infringement, or (2) additional claims had been asserted against Petitioner in concurrent district court litigation. But the Board did not find any such reason in this proceeding. Instead, Petitioner simply presented an argument it could have made in the earlier proceeding. Thus, the Board chose to exercise its discretion under 35 U.S.C. § 325(d) to deny the Petition, because it presented merely “the same or substantially the same prior art or arguments” presented in the previous proceeding.

Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., Samsung Telecommunications America, LLC, and Samsung Austin Semiconductor, LLC, IPR2015-00118
Paper 14: Decision Denying Institution and Joinder
Dated: January 28, 2015
Patent: 8,023,580 B2
Before: Jameson Lee, Howard B. Blankenship, and Justin Busch
Written by: Busch
Related Proceedings: Rembrandt Wireless Technologies, LP v. Samsung Electronics Co., No. 2:13-cv-00213 (E.D. Tex.); IPR2014-00519; IPR2014-00514; IPR2014-00515; IPR2015-00114