iTakeaway: The Board has the discretion when instituting an inter partes review to deny some grounds as redundant, unless the petition clearly sets forth differences between the grounds, including why some are more relevant than others. The Board wants petitioners to focus on the best possible rejections and not the quantity of proposed rejections.
In its Decision, the Board denied Petitioner’s Request for Rehearing of the Board’s Decision Not to Institute one of Petitioner’s proposed grounds of rejection. The Petitioner’s request failed to show that the Decision Not to Institute was an abuse of discretion.
The Board previously granted Petitioner’s petition to institute an inter partes review of the claims were challenged as unpatentable under 35 U.S.C. § 103 over different combinations of five references. In rendering the decision on institution, the Board exercised its discretion in denying many other asserted grounds as redundant.
In the Rehearing, Petitioner argued that some of the grounds that the Board denied for redundancy were strong references that were different from grounds that were instituted. The Board explained that the focus of a redundancy designation is on whether the petitioner articulated a meaningful distinction between grounds in terms of relative strengths and weaknesses with respect to application of the prior art disclosures to one of more claim limitations. Any new arguments provided in the Rehearing about the differences in the specific grounds cannot be considered with regard to whether the Board erred in its decision on institution of the Petition. Thus, because the Petition failed to explain that any of the denied grounds were more relevant than the grounds instituted, the Board did not abuse its discretion in denying certain grounds as redundant.
GoerTek, Inc. and GoerTek Electronics, Inc. v. Knowles Electronics, LLC, IPR2013-00523
Paper 26: Decision on Petitioner’s Request for Rehearing of Institution
Dated: May 30, 2014
Patent 8,121,331 B2
Before: Kevin F. Turner, Benjamin D. M. Wood, and Michael J. Fitzpatrick
Written by: Turner
