Unified Patents, Inc. v. PersonalWeb Techs., LLC

Informative decision only: persuasive authority, not binding precedent. When a petition challenges claims on the same reference (Woodhill) that the Board already held unpatentable in one inter partes review (on appeal) and instituted against every challenged claim in another, the Board may exercise its discretion under 35 U.S.C. § 325(d) to deny the petition because "the same or substantially the same prior art or arguments previously were presented to the Office." The Board took into account the efficient administration of the Office under 35 U.S.C. § 316(b). No prior precedent directly addressed this issue in the decision text; the Board cited none for the § 325(d) point and relied on the statute itself. For a petitioner, a later-filed follow-on petition that repeats the same reference against claims already under review risks denial, even when it is accompanied by a joinder motion (which was denied) and the petitioner gets no chance to present its own arguments or evidence. For the patent owner, the decision supports opposing multiple overlapping petitions on the same art and claims in a preliminary response, on grounds of waste of time, effort and resources. The Board cited no Federal Circuit, CCPA or Supreme Court authority; it relied on 35 U.S.C. §§ 314(a), 316(b) and 325(d). LEGAL TEST OR STANDARD: The Board applied the text of 35 U.S.C. § 325(d): in determining whether to institute, 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." It also took into account the efficient administration of the Office under 35 U.S.C. § 316(b). It did not set out numbered factors. TRIGGERING FACTS: The petition challenged claims 1-4, 29-33, 35, and 41 of the '791 patent on Woodhill under §§ 102(e) and 103(a). In IPR2013-00082 the Board had held claims 1-4, 29-33, and 41 unpatentable over Woodhill, and that decision was on appeal to the Federal Circuit. In IPR2014-00057 review was instituted on Woodhill for all of claims 1-4, 29-33, 35, and 41. The petitioner was a different party, and its joinder motion was denied in a concurrent decision. KEY QUOTE: "We have discretion under 35 U.S.C. § 325(d) to reject a petition when the same or substantially the same prior art or arguments were presented previously in another proceeding before the Office." (Paper 13, p. 7) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. PRACTICE TIP: Before filing a petition on a reference already used in other proceedings on the same patent, check whether those proceedings already cover every challenged claim. If they do, expect a § 325(d) denial. Explain in the petition why the new challenge is not the same or substantially the same prior art or arguments. A patent owner facing such a petition should cite the overlapping proceedings and the resulting waste of resources in its preliminary response.