On March 20, 2017, a Patent Trial and Appeal Board (PTAB) panel
declined to institute an inter partes review (IPR) of
patent claims that were also the subject of a previously filed IPR
by the same petitioner (IBM). IBM contended that the first filing
should not negate institution of the second filing because the
second petition presented "different prior art combinations
[and] different arguments regarding the prior art." In
rejecting this contention, the panel addressed several factors that
guide the PTAB in such cases, particularly focusing on (1)
"whether, at the time of filing of the earlier petition, the
petitioner knew of the prior art asserted in the later petition or
should have known of it," and (2) "the length of time
that elapsed between the time the petitioner learned of the prior
art asserted in the later petition and the filing of the later
IBM filed the first petition on May 10, 2016, and the second on
September 19, 2016. The patent owner showed that IBM had knowledge
of the later-asserted references as early as April 4,
2016—the date when IBM served the patent owner with
invalidity contentions based on thosereferences in a related lawsuit. Thus, the panel
concluded that IBM knew of the later-asserted prior art at the time
of the first filing. It also found that the five-month delay
between learning of the prior art and filing the second petition
weighed in favor of denial. Other factors, such as knowledge of the
patent owner's response to, and the PTAB's institution
decision on, the first petition before filing the second petition,
also weighed against IBM because such knowledge helped IBM select
prior art and craft arguments for its second petition.
IBM further contended that the later-asserted references were
"unavailable" during the initial review because IBM
planned to join a third party's IPR of the same patent and thus
was bound to that party's substantive arguments in its first
petition. However, the panel rejected this contention because it
does not explain the delay between filings, and "[t]here was
no requirement that Petitioner join the [third party] to the
exclusion of also, or instead of, filing [a] petition" using
the newly cited references.
Int'l Bus. Mach. Corp., et al. v. ZitoVault, LLC,
IPR2016-01851, Paper 7 (PTAB March 20, 2017).
[Fishman (opinion), Lee, Kim]
PTAB Denies Institution Of Petitioner's Second IPR Based On
Newly Cited Prior Art Because Petitioner Knew Of The Prior Art
Before Filing First IPR
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
In Wasica Finance GmbH v. Continental Automotive Systems, Inc., No. 15-2078 (Fed. Cir. 2017), the patentee Wasica Finance discovered, among other things, the importance of using consistent terminology in the patent specification and claims.
Why wait more than a week after the Supreme Court issued its March 21 decision in SCA Hygiene Products Aktiebolag et al. v. First Quality Baby Products, LLC, et al. to send a "Breaking News" eAlert? Because the Supreme Court said delay doesn't matter!
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).