Should a Petitioner who failed to obtain institution be allowed to refile and try again? When the initial failure was in proof that a patent is a covered business method (CBM) patent, the Board allowed a second petition to proceed. After the Board initially denied institution (CBM2014-00084), Motorola Mobility successfully obtained institution of a new CBM petition directed to the same patent (CBM2015-00004) but containing a more extensive section addressing the CBM standard. The patent owner, Intellectual Ventures, argued that 35 USC 325(d) is intended to prevent this kind of second chance to prove that the jurisdictional requirement of a CBM has been met by granting the Board discretion to deny a petition because “the same or substantially the same prior art or arguments previously were presented to the office.” The argument that allowing a refiled petition rearguing an issue that had already been litigated by the same parties and decided in the Patent Owner’s favor would violate fundamental principles of fairness and due process did not persuade the Board.

In 2014, Motorola Mobility filed a petition for CBM review against Patent 6,658,464 (“the ‘464 patent) owned by Intellectual Ventures.  CBM2014-00084. The Petition allotted 5 pages to the analysis of whether the ‘464 is a CBM patent. Petitioner cited to portions of the specification of the ‘464 patent that identified uses for the patented invention including the transmission of content related to financial planning and portfolio management systems and filing tax returns. Then, citing only the Office Trial Practice Guide, the Petition  stated that the technologies recited in the patent claims, a computer and a network, were well-known in the prior art and their combination leads to a normal, expected, or predictable result. Denying the 2014 petition, the Board found that the Petitioner made only “conclusory, unsubstantiated allegations” and failed to show that the ‘464 patent does not solve a technical problem using a technical solution. The Board reach the question of whether the patent is directed to a financial product or service.

Following the Board’s denial, Motorola Mobility filed a new petition (CBM2015-00004). This new petition included 20 pages of argument directed to the CBM issue along with citation to prior art and an expert declaration. Instituting CBM review on the second filing, the Board found that the specification explicitly describes uses for the ‘464 patent that are financial in nature and that the patent does not recite a technological feature that is novel and non-obvious over the prior art, so it is not directed to a technological invention that would be excluded from a covered business method patent review. The Board declined to exercise its discretion to deny the petition under 35 USC 325(d) because it had never reached the merits of the grounds for unpatentability in the first proceeding.

Section 325(d) is discretionary and does not contain a prohibition against any filing of a second petition against a patent.

In response to Intellectual Ventures’ Motion for Reconsideration, the Board reiterated that Section 325(d) is discretionary and does not contain a prohibition against any filing of a second petition against a patent. So, at least under these circumstances, a petitioner may be given the opportunity to correct the substance of its earlier filing and take a second shot at invalidating the patent-at-issue.