Too Much of a Good Thing: The Challenge of Being Comprehensive and Yet not Redundant

By Reza Mollaaghababa
In a number of IPR requests, the PTAB has relied on its authority to “deny some or all grounds for unpatentability for some or all of the challenged claims” to refuse to institute IPR based on certain invalidity grounds put forth by a challenger that the PTAB considered as cumulative relative to other grounds for which the review was instituted. 37 C.F.R. 42.108(b). The PTAB has reasoned that its denial for review of redundant invalidity grounds comports with the policy that the rules for conducting IPR proceedings be “construed to secure the just, speedy, and inexpensive resolution of every proceeding.” 37 C.F.R.  42.1(b).

In Schrader-Bridgeport Interntional, Inc. v. Continental Automotive Systems US, Inc. (IPR 2013-00014), the PTAB instituted inter partes review of claims 1-5 and 7-11 of U.S. Patent No. 6,998,973 based on certain grounds proposed by the petitioner but considered some other grounds as duplicative and hence refused to institute review based on those grounds.  For example, the PTAB instituted review of the claims based on obviousness in view of a three-way combination of US Patent Nos. 6,271,748 (Derbyshire), 6,404,246 (“Estakhri”) and 6,486,773 (“Bailie), but denied the request for obviousness review based on any of the following two-way combination of Derbyshire with Estakhri, Derbyshire with Bowers (U.S. Patent No. 5,883,582), Debyshire with Bailie, Bailie with Estakhri, or Baili with Bowers.

In a request for rehearing, the petitioner asked the Board to reconsider its denial of review based on combination of Bailie and Bowers.  The petitioner argued that the Board had abused its discretion by narrowing the issues too far and that “… the relief requested will add little extra burden on the Board’s and parties’ resources, and is narrowly tailored to avoid the possibility that Schrader (the petitioner) cannot argue the Bailie/Bowers separately from Derbyshire should the Board or Federal Circuit ever change its current view of Derbyshire.” Request for Rehearing Under 37 CFR 42.71(c) and (d), page 6.

The PTAB was not persuaded by petitioner’s arguments.  In particular, the PTAB stated that “… although Schrader urges that there is a ‘non-cumulative difference’ between the Bailie and Derbyshire references taken individually (Rehearing Req. 9), Schrader does not contend that the substance of the combined references on which the petition was denied, i.e., Bailie and Bowers, is non-cumulative to the substance of the combined references on which the petition was granted, i.e., Bailie, Bowers and Derbyshire.” Decision, page 4 The PTAB further reiterated that it was charged with timely completion of IPR proceedings.

In another IPR petition (Illumina, Inc. v. The Trustees of Columbia University in the City of New York; IPR2012-00006), the PTAB again refused to authorize inter partes review based on certain grounds because it viewed those grounds as duplicative of others based on which the request for review was granted.  The petitioner has recently requested reconsideration of the Board’s decision in this regard.  The petitioner argues that the Board’s discretion with regard to granting or denying an asserted ground of invalidity is “ … limited to determining whether, in fact, the references render the challenged patent unpatentable.” Illumina Request for Reconsideration, page 12.  Specifically, “[T]he Patent Rules do not authorize the Board to exercise discretion based [on] whether or not certain references are cumulative or duplicative of each other.”  Id. The PTAB has not yet ruled on Illumina’s request for reconsideration.

A written decision of the PTAB can preclude a petitioner from pursuing any ground that “the petitioner raised or could have raised” during an inter partes review in any future proceeding at the U.S. Patent and Trademark Office (USPTO), in courts or before the International Trade Commission. 35 U.S.C. 315(e)(1).  This “estoppel” provision can encourage a petitioner to include all possible grounds of invalidity in its petition. However, if the PTAB denies any of those grounds based on redundancy, the petitioner can lose the chance to rely on those grounds not only during the IPR but also in any future proceeding.  As such, the petitioner is placed in the unenviable position of having to be comprehensive while trying to surmise if the PTAB would view some grounds as being redundant.

By Reza Mollaaghababa

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