The U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB or Board) used its § 325(d) to dismiss a petitioner’s motion for joinder with an inter partes review (IPR) instituted on an earlier filed petition by the same petitioner. Samsung Austin Semiconductor, LLC v. Rembrandt Wireless Technologies, LP, Case IPR2015-00555 (PTAB, June 19, 2015) (Blankenship, APJ).

The petitioner filed a petition requesting inter partes review (IPR) of a claim asserting that the claim was unpatentable as obvious over these references Admitted Prior Art (APA), Boer, and Siwiak. The petitioner also sought joinder with an earlier IPR proceeding against the same patent. The challenged patent relates to data communications and communication system in which a plurality of modems in a network use different types of modulation.

In the earlier-filed IPR, the PTAB stated that the petitioner failed to show that the APA and Boer taught every feature of the challenged claim. In that proceeding, the PTAB further stated that the petitioner failed to provide sufficient evidence that the ordinary artisan would have considered combining the features as a matter of “design choice.” Accordingly, the PTAB did not institute an IPR proceeding against the challenged claim. In connection with the present petition after noting the previous challenge by the petitioner in other cases, the Board refused the petition for joinder, exercising its discretion under § 325(d).

Section 325(d) states that “[a] petitioner is not entitled to multiple challenges against a patent” and that “[i]n determining whether to institute or order a proceeding . . . the Director may take into account whether … the same or substantially the same prior art or arguments previously were presented to the Office.”

In applying this rule, the PTAB concluded that “the difference between what Petitioner presents in this proceeding and what Petitioner presented in [its prior IPR petition] with respect to [the challenged] claim . . . is that Petitioner now also offers Siwiak as support for the asserted obviousness” claim. The Board explained that new combination of references was the “same or substantially the same prior art” as that previously presented and concluded that Petitioner’s current petition was “essentially, a second chance to challenge the claims” and that the Petitioner is simply presenting “arguments now that it could have made in [its earlier petition].” Given these facts, and given the fact that, barring joinder, the petition would have been time-barred under § 315(b), the PTAB exercised its discretion to deny the petition.

Practice Note: Application of 325(d) discretion is a recurring issue in second and subsequent petitions. See IP Update, Vol. 17, No. 11.