Takeaway: A decision to institute review on some claims in a first inter partes review should not act as a how-to guide for the same petitioner filing a second petition for inter partes review challenging claims that it unsuccessfully challenged in the first petition or claims that it reasonably could have challenged in the first petition.

In its Decision, the Board denied institution of inter partes review of any of the challenged claims (claims 1-43) of the ’970 Patent.  The ’970 Patent relates to filtering multimedia content, such as scenes or languages unsuitable for viewers of some ages, specifically to a computerized system for identifying and filtering automatically portions of the multimedia content during the decoding process.

Petitioner previously sought inter partes review of the same claims of the same patent in IPR2013-00484.  The Board instituted review of claims 16, 27, 28, 30-34, and 40 on the grounds that the claims were obvious based on Abecassis and Malkin, but denied the petition with respect to the remaining claims, which relied on anticipation based on Abecassis or obviousness based on Abecassis in combination with either Malkin, Ottesen, or Fujinami.  The current Petition presented two grounds of unpatentability: obviousness of all claims based on Abecassis, Malkin, and Aras, and obviousness of claims 29, 35-39, 41, and 42 based on Abecassis and Malkin.

The Board stated that pursuant to 35 U.S.C. § 325(d) it may take into account whether the same or substantially same prior art or arguments previously were presented to the office. The Board found that because the Petition presents substantially the same prior art and arguments as the prior petition, it would exercise its discretion in denying institution.  Regarding the ground of obviousness based on Abecassis and Malkin, the Board acknowledged that it did not view whether claims 29, 35-39, and 41-43 were unpatentable on this ground in the prior petition because it was not presented in that petition.  Petitioner asserted that this ground could not have been reasonably raised in that petition because it was predicated upon claim constructions that were broader than the constructions the Board applied.  The Board stated that “[a] decision to institute review on some claims in a first inter partes review, however, should not act as a how-to guide for the same Petitioner filing a second petition for inter partes review challenging claims that it unsuccessfully challenged in the first petition or claims that it reasonably could have challenged in the first petition.”  The Board then found that it was “beyond dispute” that the same references were also asserted in the prior petition, and Petitioner had not presented evidence as to why the arguments in the instant petition are substantially different from the arguments in the prior petition.

Turning then to the challenge of obviousness based on Abescassis, Malkin, and Aras, the Board noted that Aras was a new asserted reference. Petitioner recognized the similarity between the instant Petition and the prior petition by relying generally on the prior petition.  The Board also found that Petitioner’s characterizations of the asserted grounds based on Abecassis and Malkin showed that Aras is either superfluous or redundant.  Further, Petitioner did not contend that it did not know about Aras at the time it filed the first petition.  Therefore, the Board found this ground was also similar to the arguments that were previously presented.

Customplay, LLC v. Clearplay, Inc., IPR2014-00783
Paper 9: Decision Denying Institution of Inter Partes Review
Dated: November 7, 2014
Patent: 7,577,970 B2
Before: Karl D. Easthom, Justin T. Arbes, and Barry L. Grossman
Written by: Grossman
Related Proceeding: IPR2013-00484