June 22, 2015

Rembrandt Wireless Technologies sued Samsung and Research in Motion for infringement of  U.S. Patent 8,457,228 in June 2013.  The ‘228 patent relates to data communications, and in particular to a data communication system in which a plurality of modems use different types of modulation in a network.

In June of 2014, Samsung filed six IPR petitions to challenge various claims of the ’228 patent.  (IPR2014-00889 to -00893 and -00895.)   Only half of Samsung’s six petitions were instituted for trial, but claim 21 was the only claim of the ’228 patent in the district court litigation that was not instituted for trial in the PTAB.  (Rembrandt also asserted U.S. Patent 8,023,580, which was also the subject of six IPR petitions, and had additional claims not instituted for trial.)

In the original IPR challenge of claim 21 (IPR2014-00892), Samsung unsuccessfully asserted a combination of “admitted prior art” (“APA”) with U.S. Patent 5,706,428 (“Boer”).  Samsung filed another IPR petition in January 2015 with a motion for joinder to IPR2014-00892 proposing new grounds for the unpatentability of claim 21.  (IPR2015-00555.)  These new grounds combined a new reference, U.S. Patent 5,537,398 (“Siwiak”), to the originally asserted prior art.  But on June 19, 2015, the Board again denied institution of trial of claim 21 and without considering Siwiak:

We do not reach the merits of Petitioner’s additional reasoning in the instant Petition as to why Petitioner asserts that the subject matter of claim 21 would have been obvious over the combination of APA, Boer, and Siwiak. Instead, for the reasons discussed below, we exercise our discretion under 35 U.S.C. § 325(d) to deny institution of inter partes review in this proceeding.

35 U.S.C. § 325(d) states:

In determining whether to institute or order a proceeding under . . . chapter 31, the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.

To reject the second IPR petition, the Board integrated § 325(d) with 37 C.F.R.  § 42.1(b):  “[37 C.F.R. § 42] shall be construed to secure the just, speedy, and inexpensive resolution of every proceeding.”  The Board explained its denial of the petition:

Petitioner [ ] presents no argument or evidence that Siwiak was not known or available to it at the time of filing IPR ’892. In fact, Petitioner applied Siwiak in proposed grounds of rejection against claim 21 of the ’228 patent in another petition filed the same day as that in the IPR ’892 proceeding. See IPR2014-00889, Paper 2 at 58–60.  On this record, we exercise our discretion and “reject the petition” because “the same or substantially the same prior art” previously was “presented to the Office” in the IPR ’892 proceeding. [cites omitted]

Petitioner is requesting, essentially, a second chance to challenge the claims. We, however, are not persuaded that a second chance would help “secure the just, speedy, and inexpensive resolution of every proceeding.” 37 C.F.R. § 42.1(b). Permitting second chances in cases like this one ties up the Board’s limited resources; we must be mindful not only of this proceeding, but of “every proceeding.”  [cites omitted]

In this proceeding, however, we are not apprised of a reason that merits a second chance. Petitioner simply presents arguments now that it could have made in IPR ’892, had it merely chosen to do so.  In view of the foregoing, and especially in light of the fact that, barring joinder, this petition is time-barred under 35 U.S.C. § 315(b), we exercise our discretion [to deny the petition].

To conserve its limited resources, the Board must be more selective in petitions it will consider.  Petitioners must provide reasons why the Board should consider new grounds proffered in a subsequent petition, including why the new grounds could not have been presented in an earlier-filed petition.