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The PTAB has designated two more decisions as precedential.
In Valve Corp. v. Elec. Scripting Prods., Inc. (IPR2019-00062, -00063, -00084), the PTAB exercised its discretion to deny institution under 35 U.S.C. 314(a). The Board applied the General Plastic factors to determine whether to exercise discretion under Section 314(a) to deny a petition that challenges the same patent as a previous petition. The General Plastic factors include: 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 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. Regarding the first factor, the Board held that when different petitioners challenge the same patent, the Board will consider any relationship between those petitioners when weighing the General Plastic factors. In this case, petitioner Valve Corp. and HTC, petitioner in the previous IPR challenging the same patent at issue, were co-defendants in District Court litigation and were accused of infringement of the patent at issue based upon the same product which incorporated technology licensed by petitioner Valve Corp. The complete overlap in challenged claims between the two petitions, and the significant relationship between the two different petitioners, favored denying institution.
In NHK Spring Co., Ltd. v. Intri-Plex Techs., Inc. (IPR2018-00752), the PTAB exercised its discretion to deny institution under 35 U.S.C. 314(a) and 325(d). Under Section 325(d), the Board can deny institution of a trial when “the same or substantially the same prior art or arguments previously were presented to the Office.” In making this determination, the Board may consider the following factors: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which petitioner relies on the prior art or patent owner distinguishes the prior art; (e) whether petitioner has pointed out sufficiently how the examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the petition warrant reconsideration of prior art or arguments. In this case, the Board found that the petitioner relied upon the same prior art that the examiner considered and applied to reject the claims during prosecution of the patent at issue, and that the arguments that the petitioner made were substantially the same as the findings of the examiner during prosecution. These two factors weighed heavily in the Board denying institution under Section 325(d). Although not necessary (because the Board found sufficient reason to deny institution based upon the factors under Section 325(d)), the Board also found that it was justified in considering additional factors including its discretion to deny institution under Section 314(a). In this regard, the Board found that the fact that the petitioner was aware of the patent at issue for more than 10 years did not weigh in favor of denying review, because the petitioner filed the IPR petition within the one-year period mandated by Section 315(b), and the patent owner did not show that the petitioner gained any tactical advantage by waiting to file the IPR petition. However, the Board did find that the advanced state of the district court proceeding (having a trial date set months before any trial instituted on the present IPR petition would be concluded), and the similarity in prior art and arguments presented in the district court case, would make the IPR an inefficient use of resources and therefore weighed in favor of denying institution.
The precedential opinions may be accessed through the USPTO website at https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/precedential-informative-decisions.
More PTAB Precedential Opinions
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