PTAB Designates Two New Precedential Decisions and One Informative Decision Regarding Discretion to Institute Inter Partes Review

Tuesday, August 06, 2019

The Patent Trial and Appeal Board (“PTAB”) recently designated two decisions as precedential, and one as informative, that concern its discretion to institute inter partes review. The decisions address issues related to:

  • The non-exclusive factors that are considered by the PTAB under 35 U.S.C. § 325(d) when considering whether to institute an inter partes review (precedential);
  • The application of the General Plastic factors to a situation involving multiple petitions filed by different petitioners in order to determine whether a particular petition is an unfair follow-on petition (precedential); and
  • The determination of whether a request for institution of an inter partes review under 35 U.S.C. § 314(a) meets the particularity requirement of 35 U.S.C. § 312(a)(3) (informative).

Becton, Dickinson & Co. v. B. Braun Melsungen AG: PTAB Discretion to Deny Review Under 35 U.S.C. § 325(d) Based on Prior Examination of Related Patents

The PTAB previously designated Becton, Dickinson & Co. v. B. Braun Melsungen AG, Case IPR2017-01586 (PTAB Dec. 15, 2017) (Paper 8) as informative and now has further designated a portion of that decision (section III.C.5, first paragraph (pages 17-18)) as precedential. The decision concerns the non-exclusive factors that are considered by the PTAB under 35 U.S.C. § 325(d) when considering whether to institute an inter partes review. The decision is consistent with the guidance set forth in the July 2019 Update to the Trial Practice Guide (click here for a summary of the July 2019 Update).

The portion of the Becton Dickinson decision that is precedential addresses six non-exclusive factors that the PTAB may consider when exercising its discretion under 35 U.S.C. § 325(d), when a petition includes the same or substantially the same prior art or arguments that previously were presented to the United States Patent and Trademark Office (the “Office”), including:

(1) the similarities and material differences between the asserted art and the prior art involved during examination;

(2) the cumulative nature of the asserted art and the prior art evaluated during examination;

(3) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection;

(4) the extent of the overlap between the arguments made during examination and the manner in which the petitioner relies on the prior art or patent owner distinguishes the prior art;

(5) whether the petitioner has pointed out sufficiently how the examiner erred in its evaluation of the asserted prior art; and

(6) the extent to which additional evidence and facts presented in the petition warrant reconsideration of the prior art or arguments.

In this case, the PTAB exercised its discretion under § 325(d) and declined to institute review on one of the petitioner’s proffered grounds of obviousness because both references (Woehr and Tauschinski) were already considered by the Office (in two separate grounds) during the examination of the parent patent, from which the challenged patent claims priority.

Notably, the PTAB relied on the prior examination of a different patent (the challenged patent’s parent) to support its analysis and denial of the ground. This expansion of the PTAB’s discretion under § 325(d) could make it difficult to challenge patents that are part of large patent families.

Valve Corporation v. Electronic Scripting Products, Inc.: Denial of Inter Partes Review Under 35 U.S.C. § 314(a) on the Basis that Petitions were Unfair Follow-On Petitions

On April 2, 2019, the PTAB issued a precedential decision that denied three petitions filed by petitioner Valve Corporation (“Valve”) to institute inter partes review of a patent on the basis that they constituted unfair follow-on petitions to a previously denied petition filed by HTC Corporation and HTC America, Inc. (“HTC”). In the previous decision, the PTAB identified a list of factors—the General Plastics factors—to be considered in determining whether to deny a petition that challenged the same patent as a previous petition. See Gen. Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha, Case IPR2019-01357 (PTAB Sept. 6, 2017) (Paper 19) (precedential).

In this new decision, the PTAB applied the General Plastic factors to a situation involving multiple petitions filed by different petitioners. In the case, Electronic Scripting Products, Inc. (“ESP”) filed a patent infringement lawsuit against HTC and Valve. HTC filed a petition requesting inter partes review of a patent owned by ESP. The PTAB denied the request for failure to show a likelihood of prevailing. Subsequently, Valve filed three petition challenging the patent on the same grounds as HTC. ESP argued that Valve’s petitions constituted unfair follow-on petitions. Valve countered that its petitions were proper because it was an unrelated company.

The PTAB denied the institution of an inter partes review based on 35 U.S.C. § 314(a) in light of the General Plastic factors. In particular, the decision states that the first General Plastic factor (“whether the same petitioner filed a petition directed to the same claims of the same patent”) applied to Valve because Valve joined a previously instituted inter partes review proceeding. Therefore, Valve was considered to have previously filed a petition directed to the same claims of the same patent. The PTAB explained that there was a “significant relationship” between Valve and HTC regarding the patent at issue due to their status as co-defendants and, as a result, their interests were aligned. The PTAB clarified, as well, that its application of the General Plastic factors is not limited to instances in which a single petitioner has filed multiple patents.

Adaptics Limited v. Perfect Company: PTAB Denies Institution of Inter Partes Review for Lack of Particularity

In an informative decision, the PTAB denied institution of an inter partes review under 35 U.S.C. § 314(a) on the basis that petitioner Adaptics Limited’s petition failed to meet the particularity requirement of 35 U.S.C. § 312(a)(3). See Adaptics Limited v. Perfect Company, Case IPR2018-01596 (PTAB Mar. 6, 2019) (Paper 20) (informative). The PTAB noted that the petition’s lack of particularity resulted in voluminous and excessive grounds. The PTAB explained that the petition should be denied “in the interests of efficient administration of the Office and integrity of the patent system and as a matter of procedural fairness to Patent Owner.”

The PTAB explained that 35 U.S.C. § 312(a)(3) requires an IPR petition to identify “with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.” In this case, the PTAB determined that the petition’s lack of particularly justified its denial because the stated grounds were “voluminous and excessive.” In particular, the PTAB noted the petitioner’s extensive use of “and/or” to connect references in its obviousness arguments, resulting in a multitude of grounds presented without sufficient particularity, leading to an “an unduly burdensome number of combinations.”

This decision highlights the importance of including clear, concise, and well-organized arguments in petitions.