Redundant Grounds Not An Efficient Administration of Justice

Last month, the Patent Trial & Appeal Board (PTAB) issued an Order explaining that maintaining multiple, concurrent proceedings per patent presents a significant burden for the Board.  More specifically, where the same claims are challenged across multiple, redundant petitions (i.e., pile-on), the Board pointed out that instituting trial across all redundant filings may undermine the Office’s ability to complete proceedings in a timely manner and places an unfair burden on the Patent Owner. 35 U.S.C. § 314(a).

That petition filer, which has filed numerous redundant petitions across a large patent portfolio, is now seeing the first of its redundant petitions being denied.


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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.
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Director Encouraged to Do What He is Already Doing?

At several bar events over the past few weeks, the Director has made clear that the agency is “looking into” ways to address certain serial petitioning practices beyond that of the “follow-on” scenario. For example, where multiple petitions are filed at the same time for the sole purpose of multiplying the number of grounds for an AIA trial proceeding.

This past Tuesday, the Senate Judiciary Committee sent a letter to Director Iancu seemingly asking him to do what he is already doing.  And for him to respond to proposed directives (transparently presented in the form of questions) on accomplishing such.
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Close Trial Date to Doom Parallel IPR Petitions?

Last September, the Patent Trial & Appeal Board (PTAB) found the advanced stage of a parallel district court proceeding weighed in favor of denying a follow-on, IPR petition. NHK Spring Co. Ltd. v. Intri-Plex Technologies Inc. That is, when weighing the equities of a follow-on petition under General Plastic, the competing litigation’s scheduled conclusion before the end of any potentially instituted IPR favored a discretionary denial of the petition under 35 U.S.C. § 314(a).

Since that time, the existence of late stage litigation proceedings has been raised in the context of first-filed petitions, and is beginning to gain traction there as well.
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