The Patent Trial and Appeal Board has agreed to review a Tela Innovations Inc. patent directed toward microprocessor technology while also denying Intel's follow-on petition for inter partes review of the same patent, which challenges the same claims with different prior art.
In a pair of institution decisions issued Thursday, the board said that Intel's argument for two IPRs doesn't fly because the prior art the chipmaker refers to for each case discloses the same elements and are thus essentially the same.
Reasoning that Intel hadn't identified "any issue grounded on the use of two references" in one IPR versus one reference in the other, the board determined that the chipmaker was relying on a single reference in each case to challenge the sole independent claim at issue.
"On this record, inter partes review on the instant petition would be inconsistent with the efficient administration of the office, because petitioner has failed to establish sufficient differences between the grounds of the two petitions," the decision to deny institution said.
In the other case, which the board did agree to institute, Tela had argued unsuccessfully that the board should deny that petition as well. For one thing, Tela said Intel's May 2018 suit for a declaratory judgment of noninfringement against Tela in the Northern District of California had challenged the validity of claims in the patent, which if born out would violate Section 315 of the Patent Act.
But on that point, the board said that Intel hadn't sought a declaration in the district court case that any claim in the patent is invalid, and so the statutory bar on inter partes review after a party challenges a patent's validity in a civil case isn't triggered.
The board's decision in that case said that Intel had shown "a reasonable likelihood" of prevailing on showing at least one challenged claim is invalid as obvious over an earlier patent.
In trying to persuade the board not to institute review, Tela had also pointed to overlap with an ongoing International Trade Commission investigation of Intel, in which Tela claims that computer makers like Acer and Lenovo, which use Intel's microprocessors in various products, infringe five of its patents covering related microprocessor technology.
Tela said that Intel had challenged the validity of the patent in the ITC case with the same prior art, but the board noted in its institution decision that the patent was terminated from the ITC proceeding, making that argument irrelevant.
The board also shot down Tela's argument that Intel was wasting the board's time and resources by "filing multiple overlapping petitions." The board said Tela failed "to explain how filing a large number of petitions challenging a number of different patents supports denying institution of every petition, including this one."
Counsel for the parties did not immediately respond to a request for comment.
The patent-in-suit is U.S. Patent No. 7,943,966.
Judges Jo-Anne M. Kokoski, Kristina M. Kalan and Wesley B. Derrick sat on the panels for the PTAB.
Intel is represented by Todd Friedman, Gregory Arovas, Christopher Mizzo and Bao Nguyen of Kirkland & Ellis LLP.
Tela is represented by Gunnar Leinberg, Bryan Smith, Edwin Merkel and Andrew Zappia of Pepper Hamilton LLP.
The cases are Intel Corp. v. Tela Innovations Inc., case numbers IPR 2019-01220 and IPR 2019-01228, at the U.S. Patent Trial and Appeal Board.