United States: PTAB Precedential Decisions On Discretion To Institute Inter Partes Review

Last Updated: July 11 2019
Article by Kwanwoo Lee

In May 2019, the PTAB designated precedential two IPR decisions related to its discretion to institute inter partes review.

In Valve Corp. v. Electronic Scripting Products, Inc., the Board denied institution under 35 U.S.C. § 314(a), applying the precedential General Plastic factors to deny institution of a follow-on petition. See General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 17-18 (PTAB Sept. 6, 2017)(precedential) and our post about this case. The Board determined that all the General Plastic factors weighed against institution.

According to the first General Plastic factor, the Board considers whether the same petitioner previously filed a petition directed to the same claims of the same patent. Valve filed its Petition requesting inter partes review of U.S. Patent No. 9,235,934 (the '934 patent) after HTC Corporation and HTC America (collectively "HTC") filed a petition also requesting review of the '934 patent. While Valve was not "the same petitioner" as HTC, the Board held that the General Plastic factors are "not limited solely to instances when multiple petitions are filed by the same petitioner." The Board declared that "when different petitioners challenge the same patent, we consider any relationship between those petitioners when weighing the General Plastic factors." The Board determined in this case that there was a "significant relationship" between Valve and HTC, because both were co-defendants in district court litigation accused of infringing the '934 patent based on the same HTC product that incorporated technology licensed from Valve.

In addressing other General Plastic factors, the Board determined that Valve knew or should have known of the prior art asserted in the earlier HTC petition at the time it was filed, basing that conclusion on the fact that Valve cited the same prior art in its own filing and clearly found the newly cited prior art references quickly, as it took less than 2 months to prepare and file its Petition. In any event, the Board concluded that Valve could have found the prior art asserted in its Petition through the exercise of reasonable diligence, and that as licensor of the technology to HTC, Valve had interests aligned closely with those of HTC. The Board concluded that Valve's delay of five months after HTC's petition was too long.

The Board was also persuaded by the Patent Owner's arguments grounded in the General Plastic factors that Valve had gained a tactical advantage by waiting to file its Petition, despite the fact that it was otherwise timely. Valve had used the Board's institution decision in HTC's petition as a roadmap to remedy deficiencies the Board had identified in the declaration of HTC's expert (also used by Valve in its Petition). The Board also criticized Valve's tactic of filing not one, but three petitions after instituting review on the HTC petition as a "serial and repetitive attack," "implicat[ing] the efficiency concerns underpinning General Plastic."

In NHK Spring Co. v. Intri-Plex Technologies, Inc., the Board denied institution under 35 U.S.C. § 325(d), exercising its discretion to deny a petition when "the same or substantially the same prior art or arguments previously were presented to the Office." See Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17-18 (PTAB Dec. 15, 2017) (informative). Declining to institute review of U.S. Patent No. 6,183,841 (the '841 patent), the Board found that the prior art and arguments asserted by Petitioner NHK Spring had been substantively considered by the examiner during prosecution. The Board concluded that NHK had not shown sufficiently how the examiner erred in evaluating the asserted prior art or why the Board should reconsider the examiner's decision.

The Board also found that in a parallel district court proceeding, NHK was asserting the same prior art arguments, and that this litigation was in an advanced state. A jury trial was set to begin nearly 6 months before the trial in any IPR would have concluded. Therefore, the Board held that instituting the IPR would not be consistent with "an objective of the AIA ... to provide an effective and efficient alternative to district court litigation."

In doing so, however, the Board rejected the Patent Owner's arguments that review was precluded because while the petition was timely, NHK had known about the '841 patent for more than 10 years before its petition and failed to provide an explanation for why it waited so long to file. The Board found, however, that the Patent Owner had not identified any tactical advantage NHK gained by waiting to file its petition.

These precedential decisions illustrate that:

  • the Board may deny institution even where a meritorious follow-on petition is timely filed;
  • if the petitioner has a "significant relationship" with another petitioner who has already filed a petition to challenge a patent, filing a follow-on petition as soon as possible is critical;
  • waiting too long to file a follow-on petition may doom a petition, especially where the petitioner has obviously benefitted from the delay, such as where the petitioner is able to react to the Board's decision on the prior petition;
  • asserting the same prior art cited during prosecution in a petition is a losing strategy, unless the petitioner clearly shows how the examiner erred in evaluating the asserted prior art or provides additional evidence and facts that warrant reconsideration of such prior art; and
  • if there is a parallel district court proceeding that will analyze the same issues and will be resolved before trial on the petition concludes, institution of the petition is less likely.

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.

Authors
Similar Articles
Relevancy Powered by MondaqAI
Oblon, McClelland, Maier & Neustadt, L.L.P
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Oblon, McClelland, Maier & Neustadt, L.L.P
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
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.

Disclaimer

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.

General

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