United States: A Single Bite At The Apple: The Board's Discretion To Deny Institution Under § 314(a)

Last Updated: May 4 2017
Article by Albert Liou

Most Read Contributor in United States, September 2019

In a series of related decisions issued in April 2017, the PTAB exercised its discretion under 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a) to deny institution of inter partes review petitions filed by Xactware Solutions, Inc. against Eagle View Technologies, Inc. (IPR2017-00021, IPR2017-00025, IPR2017-00027, and IPR2017-00034.)  Xactware had filed the petitions to assert alternative grounds after having received the PTAB's decisions not to institute certain claims of Xactware's earlier petitions involving the same patents.  Even though Xactware's second set of grounds did not constitute the "same or substantially the same prior art or arguments" previously presented, 35 U.S.C.  § 325(d), the PTAB nonetheless found Xactware's strategy to be unfair and prejudicial to the patent owner, and denied institution.

The facts of each proceeding are similar.  As an example, IPR2017-00021 challenged claims of U.S. Patent No. 8,078,436, which related to measuring the roof of a building.  Xactware originally filed an IPR petition on February 8, 2016, challenging claims of the same patent as obvious over the combinations of the Hsieh and Applicad references. (IPR2016-00582.)  After the patent owner filed a preliminary response, the PTAB denied institution of all claims on August 16, 2016, finding that the Xactware had failed to prove that Hsieh qualified as a printed publication.  The PTAB further denied Xactware's request for rehearing on September 21, 2016.  On October 5, 2016, Xactware filed the petition in IPR2017-00021, challenging the same claims as obvious over the combinations of Avrahami and Applicad, and McKeown and Applicad.

In denying institution, the Board noted that § 325(d) did not apply because the asserted prior art was not the same as the first petition; however, the PTAB indicated concerns over "the potential inequity of Petitioner filing multiple attacks, adjusting along the way based on Patent Owner's contentions and the PTAB's decision responding to a prior challenge."  IPR2017-00021, Paper 9, at 6-7 (PTAB Apr. 14, 2017.)  The PTAB recited five factors in determining whether it should use its discretion to deny institution under § 314(a):

(a) whether the same petitioner previously filed a petition directed to the same claims of the same patent,

(b) whether the petitioner knew or should have known of the prior art asserted in the later petition when it filed its earlier petition,

(c) whether at the time of filing of the later 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 earlier petition,

(d) the length of time that elapsed between when the petitioner had the patent owner's or Board's analysis on the earlier petition and when petitioner filed the later petition, and

(e) whether the petitioner provides adequate explanation why we should permit another attack on the same claims of the same patent.

Id. at 7-8.  In previous similarly-decided cases under § 314(a), the PTAB has often cited two additional factors: (i) the finite resources of the Board and (ii) the requirement under 35 U.S.C. § 316(a)(11) to issue a final determination not later than 1 year after the date on which the Director notices institution of review.  See, e.g., Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 16, at 9 (PTAB Nov. 14, 2016); Great West Cas. Co. v. Intellectual Ventures II LLC, IPR2016-00453, Paper 12, at 7-8 (PTAB June 9, 2016); Nvidia Corp. v. Samsung Elecs. Co., IPR2016-00134, Paper 9, at 7 (PTAB May 4, 2016).

The PTAB noted that Xactware knew of the references it asserted in its second petition—Avrahami, Applicad, McKneown—at the time of its first petition because it had included them in invalidity contentions served in a companion district court litigation.  IPR2017-00021, Paper 9, at 8-9.  The PTAB also noted that at the time Xactware filed its second petition on October 5, 2016, it had already received and considered the patent owner's preliminary response as well as the PTAB's decision denying institution of the first petition.  Id. at 9-10.  The delay in filing, the PTAB said, "affords Petitioner the unfair advantage of adjusting its litigation positions."  Id. at 7-8 n.4.

The PTAB considered Xactware's timing to be an unfair second bite at the apple:

We view Petitioner's strategy—withholding additional challenges until receiving the Board's feedback indicating those challenges are better than the original challenges—as unfair to Patent Owner.  With Patent Owner's Preliminary Response and the Board's Decision for the First Petition, and ample time to take advantage of those materials, Petitioner made a shift in its [second] Petition.  After our Institution Decision outlined   deficiencies in Hsieh related to public accessibility, Petitioner's [second] Petition asserts McKeown to account for the claim elements it previously mapped to Hsieh.

Id. at 10-11.  In its decision denying Xactware's petition, the panel noted that while past PTAB decisions have considered the length of time that elapsed between the petitioner's discovery of the prior art asserted in the second petition and the filing of the second petition, it viewed "the more relevant delay to be that between when Petitioner had the First Petition feedback, and the filing of the [second] Petition.Id. at 7-8 n.4 (emphasis added).

When viewed together with the PTAB's recent decision instituting review in Baker Hughes Inc. v. Packers Plus Energy Services, Inc., IPR2016-01505, Paper 19 (PTAB Feb. 9, 2017), it appears that the tactic most disfavored by the PTAB is a petitioner waiting until it has received a decision not to institute to correct its own mistakes in filing a successive petition.  In Baker Hughes, the PTAB instituted review of a petitioner's second-filed petition involving the same claims, despite the patent owner's protest that the prior art relied upon by the petitioner in the second petition was available to the petitioner at the time it filed its first petition, and that the petitioner used the patent owner's preliminary response to the first petition as a "roadmap" in preparing the second petition.  IPR2016-01505, Paper 19, at 7-8.  In contrast to Xactware, however, the petitioner in Baker Hughes filed its second petition a few days before it received a decision on institution of its first petition.  Id. at 2.


Petitioners should be wary of filing follow-on petitions challenging the same claims as those challenged by an earlier petition filed by the petitioner.  Even if the second petition does not present the same or substantially the same prior art or arguments as the first petition, the PTAB may nonetheless exercise its discretion to deny institution of the second petition, especially if it views the second petition as unfairly using the PTAB's own earlier decision as a guidepost to correct the petitioner's own shortcomings in the first petition.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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.

Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions