Trending At The PTAB: Multiple Petitions In IPRs

A petitioner may file multiple inter partes review petitions challenging the same patent under the Leahy-Smith America Invents Act.

Multiple petitions are generally categorized into two types: serial and parallel.

However, the PTAB has discretion to deny such petitions. The Patent Trial and Appeal Board Consolidated Trial Practice Guide, or CTPG, published in November 2019 states that “one petition should be sufficient to challenge the claims of a patent in most situations.”¹ The CTPG recognizes that

there may be circumstances in which more than one petition may be necessary, including, for example, when the patent owner has asserted a large number of claims in litigation or when there is a dispute about priority date requiring arguments under multiple prior art references ... although this should be rare.²

When deciding whether to institute an inter partes review, the PTAB considers a number of nonexclusive factors enumerated by the board in General Plastic Industrial Co. v. Canon Kabushiki Kaisha in 2016, including:

1. Whether the same petitioner previously filed a petition directed to the same claims of the same patent;
2. Whether at the time of filing of the first petition the petitioner knew of the prior art asserted in the second petition or should have known of it;
3. Whether at the time of filing of the second petition the petitioner already received the patent owner's preliminary response to the first petition or received the board's decision on whether to institute review in the first petition;
4. The length of time that elapsed between the time the petitioner learned of the prior art asserted in the second petition and the filing of the second petition;
5. Whether the petitioner provides adequate explanation for the time elapsed between the filings of multiple petitions directed to the same claims of the same patent;
6. The finite resources of the board; and
7. The requirement under Title 35 of the U.S. Code, Section 316(a)(11), to issue a final determination not later than one year after the date on which the director notices institution of review.³

According to a U.S. Patent and Trademark Office study in 2023, since the CTPG's publication, petitioners have filed fewer multiple petitions, and the PTAB has instituted fewer AIA trials based on such petitions, and only under certain circumstances.⁴

USPTO Notice of Proposed Rulemaking

In April, the USPTO released a notice of proposed rulemaking aimed at formalizing treatment of multiple petitions.⁵ Specifically, the NPR provides definitions for parallel and serial petitions as follows:

A serial petition is a petition that challenges overlapping claims of the same patent that have already been challenged by the petitioner, the petitioner's real party in interest, or a privy of the petitioner; and is filed after the filing of a patent owner preliminary response to the first petition, or the expiration of the period for filing such a response under Section 42.107(a)(2) or Section 42.207(a)(2), or as otherwise ordered, if no preliminary response to the first petition is filed.

Parallel petitions are two or more petitions that challenge the same patent and are filed by the same petitioner on or before: the filing of a patent owner preliminary response to any of the petitions, or the due date set forth in Section 42.107(a)(2) or Section 42.207(a)(2) for filing a patent owner preliminary response to the first petition — if no patent owner preliminary response to the petitions is filed.⁶

The NPR proposes that the board will not institute parallel petitions without a threshold showing of good cause for why more than one petition is necessary either in the petition or a separate filing. The board may consider various factors relevant to determining good cause, including:

1. A petitioner's ranking of their petitions in the order in which petitioner desires the board to consider the merits of their petitions relative to the other parallel petitions;
2. An explanation of the differences between the petitions and why the issues addressed by the differences are material;
3. The number of patent claims of the challenged patent that have been asserted by the patent owner in district court litigation;
4. The number of claims the petitioner is challenging;
5. Whether there is a dispute about the priority date of the challenged patent;
6. Whether there are alternative claim constructions that require different prior art references on mutually exclusive grounds;
7. Whether the petitioner lacked information, such as the identity of asserted claims, at the time they filed the petitions;
8. The complexity of the technology in the case; and
9. Any other information believed to be pertinent to the good cause determination.⁷

The NPR also states that serial petitions may be denied, proposing the following factors to be considered:

• Whether, at the time of filing of the first petition, the petitioner knew of the prior art asserted in the second petition or should have known of it;
• Whether, at the time of filing of the second petition, the petitioner had already received the patent owner preliminary response to the first petition or had received the board's decision on whether to institute review in the first petition;
• The length of time that elapsed between the time the petitioner learned of the prior art asserted in the second petition and the filing of the second petition; and
• Whether the petitioner provided an adequate explanation for the time elapsed between the filings of multiple petitions directed to the same claims of the same patent.⁸

The factors for serial petition align closely with General Plastics factors 2 through 5, but do not include factors 6 and 7.

Recent IPR Decisions

The NPR indicates the PTAB's intention to continue to take a tougher stance on multiple petitions, a sentiment echoed in recent IPR institution decisions.

In Masimo Corp. v. Apple Inc., the petitioner initially filing a petition challenging claims under dispute in district court litigation.⁹ During the pendency of the first petition, the patent owner alleged two additional dependent claims.

Approximately seven months after the first petition's institution, the petitioner filed a second petition targeting these new dependent claims. The board exercised its discretion to deny institution in January.

Specifically, the board emphasized General Plastics factor 3 noting “there is substantial evidence of ‘road-mapping'” because the petitioner had already received patent owner's preliminary responses to the first petition and to another petition filed by a third party against the same patent, and the board's institution decision for the first petition.¹⁰

Regarding General Plastics factor 1, the board found that petitioner's challenge of the additional dependent claims requires challenging the same independent claims in the first petition.¹¹

The importance of challenging all potential claims through parallel petitions instead of serial petitions is also exemplified in AliveCor Inc. v. Apple Inc.¹² Here, the petitioner filed two parallel petitions, each petition targeting a different set of claims.

Given that all claims of the patent were subject to infringement allegations in the U.S. District Court in the Northern District of California, the board found it reasonable to challenge all claims concurrently.

Moreover, the sheer volume of 20 claims, totaling nearly 1,000 words, justified the filing of two petitions, as each independent claim differed significantly in scope and language, necessitating distinct analyses.¹³

Consequently, the board determined that the petitioner had provided sufficient justification for the parallel petition in January.¹⁴

However, the decision to file multiple petitions is not solely contingent on claim counts and word lengths.

In Affordable Wire Management LLC v. Cambria County in April, the board denied institution of the second petition despite the challenged patent included 25 claims that comprises 1,363 words.¹⁵ This was because both petitions were targeting the same 16 claims and the petitioner failed to substantiate the necessity for two petitions.¹⁶

Given the word count limit, the petitioner must carefully balance the number of grounds and claims to be challenged. For instance, in Whatfix Inc. v. Walkme LTD, the petitioner filed two parallel petitions.¹⁷ The board denied institution of the second petition in March, expressing difficulty in reconciling the petitioner's arguments for two petitions.

Specifically, the petitioner asserted three alternative challenges against nineteen of the challenged claims in the first petition but provides no explanation as to why three alternative challenges were necessary for all of these 19 claims.¹⁸

When evaluating multiple petitions, the board also considers whether the petitioner has a significant relationship with previous petitioners challenging the same patent.

In Videndum Production Solutions Inc. v. Rotolight Ltd., the petitioner filed an IPR petition challenging a patent that had been previously challenged in a prior IPR filed by another party and terminated one month before oral hearing due to settlement.¹⁹ The board  initially denied institution in January, citing General Plastic factor 3 in view of the late stage at which the prior IPR was terminated.²⁰

On director review in April, USPTO Director Kathi Vidal disagreed with the board, noting that General Plastic has not been extended to any cases where the first and second petitioner do not have a significant relationship.

Practice Consideration

These recent decisions and the NPR's proposed rules underscore the board's continued scrutiny of multiple petitions.

These decisions could serve as effective tools for patent owners seeking to challenge such petitions. For instance, patent owners should emphasize fairness, timing and efficiency concerns in their preliminary responses.

Additionally, a patent owner could also explain whether the differences identified by the petitioner are directed to an issue that is not material or not in dispute.

On the other hand, the petitioner should aim to challenge as many claims as feasible within a single petition, especially when all the claims are subject to litigation in district court. To accommodate all claims within the word count limit, petitioners should focus on presenting the strongest grounds.

When multiple petitions are warranted, petitioners should favor parallel filings over serial ones. Petitioners should carefully review the factors outlined in the NPR to build a robust justification for filing parallel petitions.

This may include considerations such as extraordinary wordy claims, complex technology, distinct claim constructions, etc. Additionally, petitioners should evaluate other factors that support the need for multiple petitions.

In cases involving multiple defendants, coordination of invalidity efforts and timing is crucial to prevent inconsistencies and avoid the pitfalls associated with serial filings.

Footnotes

1. Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), at 59.

2. Id.

3. General Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper No. 19 at 15–16 (P.T.A.B. Sept. 6, 2017).

4. USPTO Multiple Petitions Study, Executive Summary (FY 2021-FY 2022 Update).

5. Patent Trial and Appeal Board Rules of Practice for Briefing Discretionary Denial Issues, and Rules for 325(d) Considerations, Instituting Parallel and Serial Petitions, and Termination Due to Settlement Agreement.

6. Id., §42.2.

7. Id., §42.108 (d).

8. Id., §§42.108(e) and 42.208(f).

9. Masimo Corp. V. Apple Inc.  , IPR2024-00071, Paper No. 7 (P.T.A.B. Apr. 25, 2024).

10. Id., at 26.

11. Id., at 17.

12. Alivecor, Inc., v. Apple Inc., IPR2023-00949, Paper No. 8 (P.T.A.B. Jan. 9, 2024).

13. Id., at 27.

14. Id.

15. Affordable Wire Management, LLC, v. Cambria County , IPR2024-00182, Paper 18 (P.T.A.B. Apr. 24, 2024), at 23.

16. Id., at 24-25.

17. Whatfix INC., v. Walkme LTD, IPR2023-01443, Paper No. 11 (P.T.A.B. Mar. 20, 2024).

18. Id., at 13.

19. Videndum Production Solutions, Inc., v. Rolight Limited, IPR2023-01218, Paper No. 12 (P.T.A.B. Apr. 19, 2024).

20. Id., at 6-7.

Originally published by Law360.

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