Abusive Petition Practices Effectively Controlled by PTAB
Once upon a time, the Patent Trial & Appeal Board (PTAB) accepted AIA trial petitions that attacked a subject patent in a serial fashion. That is, typically, a group of defendants of a multi-defendant suit would stagger their filings against a subject patent. For example, Company A would file first, after seeing the Patent Owner’s Preliminary Response to Company A, Company B would file, and then after the Board issued its Decision to Institute relative to Company A’s petition, Company C would file. In this way, each succeeding petition could improve over the first filed petition and increase the likelihood that the patent would be cancelled. This was not fair, and to the agency’s credit, once this strategy became clear, it was shut down.
With the issuance of the General Plastics decision, as any practitioner would attest, a serial petition strategy has become near impossible. But that hasn’t stopped PTAB critics from claiming the practice somehow still exists.
At last month’s PPAC meeting, the PTAB made clear that critics complaining about abusive multiple petitioning practices don’t have a leg to stand on.
First, it is important to understand what a serial petition is, and is not. If company A is sued in 2012 and files an IPR against a given patent and fails to cancel all of the claims, then Company B is sued in 2019 and files an IPR against the same patent, this is not a serial petition. It is not abusive for two different defendants, sued years apart, to challenge validity at the PTAB with different evidence anymore than it would be in the district court (where the practice is commonplace). Nevertheless, critics often point to completely separate filings made years apart as evidence that serial filings are still permitted. Nonsense
A serial petition is a petition that is filed second in time to a first petition by a same party (after the first failed attempt, for example).
Serial petitions are also different than parallel petitions. Once upon a time the PTAB accepted numerous petitions from a same party, typically filed on the same day, that might challenge the same claims in 5, 6, 7 or 8 petitions. These parallel petitions operated to “pile on” as much art as could be located. This practice was plainly abusive, and again, any practitioner will tell you that the Board effectively outlawed this practice. But, again critics will still point to petitions filed against different claim sets—because the word count wont allow them all in one filing—as evidence that this practice somehow still exists. Also nonsense.
It is not abusive to file two petitions against a 50 claim patent (e.g., petition one covering claims 1-25 and petition two covering claims 26-50) because there isn’t enough word count space in one petition to cover all of the claims asserted in a given litigation. (As I posted previously, the Board could easily shut down this criticism with a different pricing structure)
The recent study of the Board highlights that 2% of petition in FY 2020 were serial petitions, and even this small number were only granted 33% of the time:
As shown in the above statistics, FY ’16 and ’17 were prior to the issuance of General Plastic. Since that precedent has issued attempts have dropped off precipitously. In the few cases where a serial filing was accepted, the PO added claim in the district court after filing of the first petition, or otherwise agreed to the second filing.
As for parallel petitions, the Board metrics show that this practice is also now falling off (this control became effective in 2019):
Of these filings 2/3 were to address non-overlapping claim sets (i.e., petition word count issues). Of the 1/3 left, most addressed antedating issues with the prior art (explained as appropriate in the Trail Practice Guide). While it is clear to practitioners that “piling on” petitions will be denied, some file anyway in the hopes that there is some estoppel cover provided by such denials.
As apparent from the statistics above, the Board’s controls have effectively curtailed abusive practices. Statistics to the contrary misleading identify filings that are in no way abusive (such as 2/3 of the parallel filings that are driven by word count, or counting unrelated disputes as serial filings.)