Simultaneous/Redundant Petitions Attacking Same Claims Questioned

The Patent Trial & Appeal Board’s (PTAB) new focus on institution equities of serial petition challenges was the most significant development of 2018. Since that time the Board has expanded its equitable focus beyond follow-on petitions and similarly situated defendants to consider parallel litigation timing.

This week, the Board tackled a new consideration. That is, whether it makes sense from a fairness perspective to give an IPR petitioner 5 bites at the same apple. I have been expecting this one. As the Director has hinted for some time, the practice of filing multiple simultaneous petitions — for no other reason aside from piling on a Patent Owner — is a practice that will no longer be tolerated.  This problematic scenario is not the same as filing multiple petitions to cover all claims of a large claim set (that will not fit in one petition), or presenting truly alternative arguments in different petitions, but simply stacking as many grounds as possible against a single set of claims across multiple petitions. While not a widespread practice, there are a small minority of petitioners that have employed this strategy.

This week, in five IPR petitions all directed to the same claims, the Board issued an Order (here) explaining  that although the facts of General Plastic concern serial or “follow-on” Petitions, the Office Trial Practice Guide Update notes that “[t]here may be other reasons besides the “follow-on” petition context where the “effect . . . on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings,” favors denying a petition even though some claims meet the threshold standards for institution.”

The Board then found that:

Maintaining multiple, concurrent proceedings per patent presents a significant burden for the Board, because, among other things, the Board endeavors to assign all such cases to the same panel. Additionally, when there are other related patents also each challenged by multiple petitions at the same time, as is the case here, this can undermine the Office’s ability to complete proceedings in a timely manner and may place an unfair burden on the Patent Owner.

Nonetheless, at this stage of the proceedings, we decline Patent Owner’s invitation to deny all five Petitions on the basis that they are redundant. In fact, Petitioner points out alleged differences among the five Petitions, including different teachings pertaining to some claim limitations. We agree with Patent Owner, however, that the number of Petitions here challenging each patent may place a substantial and unnecessary burden on the Board and Patent Owner. Accordingly, the panel issues this Order under 37 C.F.R. § 42.5 to give the parties an opportunity to focus the Board’s limited resources on genuine issues in dispute.

Within 14 days of this Order, Petitioner shall provide a Notice not to exceed 5 pages identifying (1) a ranking of the five Petitions in the order in which it wishes the panel to consider the merits, if the Board uses its discretion to institute any of the Petitions, and (2) a succinct explanation of the differences between the Petitions, why the differences are material, and why the Board should exercise its discretion to consider the additional Petitions if it identifies a Petition that satisfies Petitioner’s burden under 35 U.S.C. § 314(a). The Board encourages Petitioner to use a table to aid in identifying the similarities and differences between the Petitions.

If it so chooses, Patent Owner may, within 14 days of the receipt of Petitioner’s Notice, provide a Response not to exceed 5 pages, stating its position with respect to any of the differences identified by Petitioner. In particular, Patent Owner should explain whether the differences identified by Petitioner are material and in dispute. If stating that reasons are not material or in dispute, Patent Owner should clearly proffer any necessary stipulations.

(internal citations omitted)

Now that the Board has set the example on redundant filings, I would expect that future invitations of Patent Owners to shut down all such filings will be viewed more favorably.