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 petition."

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 those references 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