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ARTICLE · 02 MARCH 2016

If At First You Don't Succeed... Change Your Petition

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The PTAB declined to institute an inter partes review (IPR) proceeding after a petitioner challenged a patent for a second time and with substantially the same arguments.

United StatesIntellectual Property
Patrick Muffo
Patrick Muffo
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The PTAB declined to institute an inter partes review (IPR) proceeding after a petitioner challenged a patent for a second time and with substantially the same arguments. In the eyes of the Board, the second petition did nothing more than try to remedy the first, deficient petition using the same prior art, a process frowned upon by the PTAB.

The case of Whole Space Industries, Ltd. v. Zipshade Industrial (BVI) Corp., (Case IPR2015-01632, January 29, 2016 Dec. Den. Inst.) involves a control system and method for raising and lowering window shades. The invention raises and lowers pleated window shades and Venitian blinds without requiring the manipulation of a cord or string.

Just how similar were the two petitions? The second petition challenged the same claims, involved the same parties, submitted mostly the same prior art with basically the same grounds of patentability, and included testimony from the same expert, whose declaration was identical in both

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