Takeaway: Arguments against institution based on prior art having been considered during prosecution may be more successful where a patent owner can direct the Board to a substantive discussion of the references in the record or where the Examiner considered a challenge to the claims in the same or substantially the same manner presented in the petition.

In its Decision, the Board instituted inter partes review of claims 1-24 and 29 of the ‘717 patent, where Petitioner had sought review of claims 1-30. The ‘717 patent is generally directed to a “programmable communicator device.”

The Board rejected Patent Owner’s argument that the petition should be denied under 35 U.S.C. § 325(d) because the Bettstetter and Eldridge references were considered during prosecution. “Although Patent Owner provides evidence to indicate that the references were of record during the prosecution, Patent Owner has not directed us to anywhere in the record showing a substantive discussion of these references, or that the Examiner considered a challenge to the claims in the same or substantially the same manner presented in the Petition.” Thus, the Board was not persuaded that “Petitioners and their expert do not supplement the underlying record with respect to Bettstetter and Eldridge.”

The Board next addressed claim construction and then turned to the patentability challenges. The Board found that Petitioner has demonstrated a reasonable likelihood of prevailing in challenging claims 1-24 and 29 of the ‘717 patent. Thus, institution of inter partes review was granted.

Telit Wireless Solutions Inc. et al. v. M2M Solutions LLC, IPR2016-00055
Paper 9: Decision on Institution of Inter Partes Review
Dated: April 22, 2016
Patent: 8,648,717 B2
Before: Kalyan K. Deshpande, Justin T. Arbes, and Daniel J. Galligan
Written by: Galligan
Related proceedings: Various district court matters in the United States District Court for the District of Delaware; IPR2016-00054; IPR2015-01823.