Takeaway: The Board may deny institution of review where petitioner merely replaces a non-citable reference in a prior review with a citable reference, but otherwise challenges the same claims with the same arguments.

In its Decision, the Board denied institution of covered business method review of claims 1-11, 13-17, and 19-22 of the ’808 patent. Petitioner asserted obviousness challenges to claims 1-11, 13-17, and 19-22 with a combination of Tumminaro, Ogilvy, and Ondrus II as base references, and up to two of Dalzell, Carlson, Elston, Tripp, and Deschryver. Petitioner also alleged claims 8 and 19 were unpatentable based on a combination of Bemmel, Dalzell, and Ondrus II.

Petitioner previously challenged the same claims in CBM2014-00159 over two sets of prior art references. One set included Bemmel as a base reference and the other set included Tumminaro as a base reference. The latter included Ondrus I as a reference, but the Board did not institute review of any challenged claim that relied upon the Ondrus I reference because Petitioner failed to show that Ondrus I is a reference that qualifies as a citable reference under AIA § 18(a)(1)(C). Review was instituted on all other challenged claims in CBM2014-00159. Petitioner asserted that Ondrus II is a citable reference in the instant case.

The Board noted that it has discretionary authority to institute review under 35 U.S.C. § 324. In determining whether to institute review, the Board may consider whether the petition presents the same or substantially the same prior art or arguments that were previously presented under 35 U.S.C. § 325. Patent Owner argued that the Board should exercise its discretion and deny the Petitioner under § 325(d). In CBM2014-00159 the Board has already instituted a review of claims 1-7, 9-11, 13-17, and 20-22 on obviousness grounds. Thus, the Board determined that instituting review on the same statutory basis, with the same parties, and same claims would not comport with the goals of a just, speedy, and inexpensive resolution of every proceeding under 37 C.F.R. § 42.1(b).

Regarding claims 8 and 19, the Board held that Petitioner had not offered any explanation why it could not have presented Ondrus II in CBM2014-00159. Petitioner’s arguments regarding Ondrus II are nearly identical to those presented with Ondrus I in CBM2014-00159. Petitioner argued that it submitted Ondrus I with good faith belief that it was citable prior art and that it did not withhold Ondrus II for a strategic purpose. The Board noted that § 325(d) does not mention a good faith belief, and regardless, it does not outweigh other considerations. Thus, the Petition was denied because it presents the same or substantially the same arguments already presented in CBM2014-00159.

SQUARE, INC. v. THINK COMPUTER CORPORATION, CBM2015-00067
Paper 14: Decision Denying Covered Business Method Patent Review
Dated: July 2, 2015
Patent: 8,396,808 B2
Before: Toni R. Scheiner, Michael W. Kim, and Bart A. Gerstenblith
Written by: Kim
Related Proceeding: Think Computer Corp. v. Square, Inc., 5:14-cv-01374-PSG (N.D. Cal. Mar. 25, 2014); CBM2014-00159.