The Board recently added a decision denying inter partes review in Dell, Inc. v. Electronics & Telecommunications Research Institute, IPR2015-00549, to the list of Representative Orders, Decisions, and Motions on the Board’s web site. The decision held 35 U.S.C. § 315(e)(1) estops a petitioner from requesting IPR in a follow-on petition challenging the same patent claims as the petitioner’s unsuccessful original petition, when the two petitions raise the same art in different combinations. The Board’s designation signifies the ruling can offer guidance to other litigants.
The patent in question has been challenged a number of times. Dell originally filed a petition challenging nine patent claims. Dell argued a reference called Mylex anticipated seven of the claims. Dell also raised obviousness grounds, each including a second reference called Hathorn. None of the obviousness grounds included Mylex. In March 2014, the Board instituted review on the Mylex anticipation ground and denied the obviousness grounds on the merits. The Board eventually entered a final written decision holding Dell failed to meet its burden to prove the seven claims were anticipated. After the final written decision, VMware filed a petition for IPR of the same nine claims challenged in Dell’s original petition. The Board instituted review on a ground alleging the claims would have been obvious over the combination of Mylex and Hathorn. Dell then filed a follow-on petition “substantively identical” to VMware’s petition, along with a motion for joinder with the instituted VMware IPR. Dell requested the Board institute the follow-on IPR only on the ground instituted in the VMware IPR.
The Board denied Dell’s petition for the follow-on IPR. First, the Board held Dell was statutorily estopped from challenging the seven claims addressed in the final written decision. Under 35 U.S.C. § 315(e)(1), once a petitioner has obtained a final written decision, that petitioner may not request or maintain subsequent proceedings on a ground the petitioner “could have raised” in the prior proceeding. The Board held Dell could have raised the ground in question in the original IPR because Dell asserted the relevant references, albeit in distinct grounds. Next, the Board noted Dell was not statutorily estopped from challenging the two claims not subject to the final written decision. Nevertheless, the Board held Dell’s challenge to be time-barred. Title 35 U.S.C. § 315(b) bars a petition filed more than one year after the petitioner is served with a patent-infringement complaint, unless the Board exercises its discretion to join the petitioner as a party to a pending IPR. The Board declined to join Dell to the VMware IPR because “nothing in the record shows . . . that joinder would be appropriate here for less than all the asserted claims” because the case would proceed “on different claims depending on the party,” which would “unnecessarily complicate” the proceeding. Absent joinder, the two claims were subject to § 315(b) because Dell’s follow-on petition undisputedly fell outside the one-year window.
In the past six months, the Board has highlighted a series of decisions declining to institute IPR. This decision represents yet another variation on the common theme of denying follow-on petitions that are mere variations on a previously denied theme. The decision also provides valuable guidance on the scope of estoppel under § 315(e)(1).