Dell, Inc. v. Electronics and Telecommunications Research Institute

 

Paper 10, March 26, 2015

IPR2015-00549 (Patent 6,978,346 B2)

[Petitioner is estopped from raising the grounds that petitioner could have raised in prior proceedings.

In deciding on a motion for joinder, the Board may consider the effect it will have on existing proceedings and additional time and effort it would impose on Patent Owner]

FACTS

Petitioner Dell, Inc. requested an IPR of a patent owned by the Electronics and Telecommunications Research Institute (ETRI) and filed a motion to join these proceedings with an already instituted IPR of the same patent challenged by another petitioner. Dell asserted that the challenged claims were obvious over the same combination of prior art and on the same grounds as in the already instituted IPR with which it requested a joinder.

HOLDING

Estoppel. The Board found that Dell was estopped from challenging most of the claims in the petition. 35 U.S.C. § 315(e)(1) provides that Petitioner may not maintain proceedings on the ground that it raised or could reasonably have raised in prior proceedings that resulted in the final decision. Dell had already challenged the same patent in a prior IPR that resulted in the final decision denying grounds on the merits.

The Board pointed out that what the petitioner could have raised is described in the legislative history of the America Invents Act and includes “prior art which a skilled searcher conducting a diligent search reasonably could have been expected to discover.” 157 Cong. Rec. S1375 (daily ed. Mar. 8, 2011). In the instant case, what a searcher could have discovered need not be determined, as both of the references over which Dell claims obviousness had been known to Dell at the time of prior proceedings. The fact that Dell used a different combination of these references in the previous IPR is irrelevant to the Board’s determination that Dell is estopped from challenging these claims.

However, § 315(e)(1) precludes Dell from challenging only those previously challenged claims, with regard to which a final written decision was issued. 35 U.S.C. § 315(e)(1). Therefore, Dell is not estopped from challenging claims that it had not challenged in its previous petition.

Joinder. The Board denied Dell’s Motion for Joinder with regard to the remaining claims (those that Dell was not estopped from challenging). The burden is on Petitioner to show that joinder is appropriate, and the Board has discretion to make that determination pursuant to 35 U.S.C. § 315(c). The remaining claims represented only a subset of claims challenged by the petitioner in the IPR which Dell requested to join. This means that had the joinder been granted, the case would proceed on different claims depending on the party. Although Patent Owner did not oppose the joinder, the Board took into account the additional time, effort, and expense that the joinder would impose on Patent Owner.

In the absence of joinder, the remaining claims were time barred by 35 U.S.C. § 315(b) as more than a year had elapsed since Dell was sued for infringing the challenged patent. Therefore, the Board denied the petition to institute IPR.

TAKEAWAY

  • Petitioner is estopped from raising the grounds that petitioner could have raised in a prior proceedings which resulted in the final written decision.
  • Petitioner is not estopped from challenging claims of the same patent that it had not previously challenged even if the grounds for such a challenge are the same as those asserted for previously challenged claims.
  • What the petitioner could have raised includes prior art, which a skilled searcher conducting a diligent search reasonably could have been expected to discover.

In exercising its discretion to grant or deny joinder, the Board considers whether the petitioner met its burden to show that joinder is appropriate and may consider other factor, such as the effect the joinder will have on existing proceedings and additional time and effort the joinder would impose on the Patent Owner.

 

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