If at First You Don’t Succeed: File, File And File Again

By Tom Engellenner
Petitioners seeking to invalidate patents via the new AIA inter partes review (“IPR”) proceedings at the U.S. Patent and Trademark Office (PTO) appear to be increasingly willing to file multiple petitions against the same patent. In several instances, the same petitioner has filed three, four or even five petitions against a single patent. An explanation for this tactic may lie in the Patent Trial and Appeal Board (PTAB) practice of culling the grounds that will be considered when an IPR is initiated by invoking its vertical or horizontal redundancy rules. (For our prior articles on the PTAB redundancy rules, click here and here.) However, this phenomenon may also reflect the formidable “fire-power” that can be mustered by some challengers (often multinational corporations) against patent owners.

For example, in December 2013, Subaru (together with a host of other car manufacturers) filed five IPRs against U.S. Patent No. 6,324,463 (relating to cruise control indicators). In October 2013, Apple filed four IPR petitions against U.S. Patent No. 7,010,536 (relating to multi-user networking systems). Similarly, Microsoft filed four IPR petitions in May 2013 against U.S. Patent No. 6,724,403 (relating to graphical user interfaces). By asserting different grounds in separate petitions, these challengers were apparently trying to minimize the likelihood of dismissal of any of their asserted grounds for invalidity based on redundancy.

In the Apple petitions against the ‘536 netwrking systems patent owned by Evolutionary Intelligence, LLC., only one of the four petitions resulted in the institution of an IPR proceeding but the PTAB did not invoke its redundancy rules and all of Apple’s grounds were considered. In the cases of the Microsoft petitions against the ‘403 graphical user interface patent, all four petitions resulted in institution of IPRs. The petitions by Subaru and the automakers coalition resulted in the institution of five IPR proceedings just last month.

In each of these three instances, the filing fees for the multiple petitions alone (not counting the much higher expenses for their lawyers to prepare the petitions) approached or exceeded $100,000. Clearly, cost did not appear to be major consideration for the challengers. However, it should also be noted that the patents challenged by Subaru, Apple and Microsoft, had already been asserted against them in federal district court actions. And the past decade has certainly borne witness to a slew of multi-million dollar patent infringement judgments against major corporations.

In another development, petitioners are also filing second and/or third petitions following PTAB decisions on their initial challenges. For example, in the first ever IPR petition filed under the new rules (IPR 2012-00001) Garmin Corporation challenged all 20 claims of U.S. Patent No. 6,778,074 (relating to speed limit indicators). However, the PTO initiated proceedings against only three of the patent claims and declined to consider the other 17 claims. After its initial petition was only granted in part, Garmin filed a second petition again challenging all of the 20 claims of the ʼ074 patent. (IPR 2013-00373).

Late last year the PTAB took up Garmin’s second petition and instituted another inter partes review of 15 more claims of the ‘074 patent. The difference appears to have been two additional references that were not presented in the first IPR. (Following the initiation of this second IPR proceeding, Garmin reached a comprehensive settlement with the patent owner, presumably on favorable terms.)

Thus, in some instances, the nature of IPR proceedings can provide a challenger a second bite of the apple, that is an opportunity to present a better crafted petition the second time around with the benefit of the PTAB’s views on claim construction and previously asserted prior art. For challengers already involved in litigation, however, the statutory bar of section 315(b) must also be borne in mind. This section precludes any entity that has been sued for patent infringement from filing a petition unless it is filed within one year of service of the complaint. Therefore, defendants charged with patent infringement may benefit from filing at least a first IPR petition well in advance of the one-year deadline. (Since the time between filing a petition and getting a decision on trial institution is typically six months, a petitioner would be prudent to file within five months after being served with a patent infringement complaint in order to preserve their second shot.)

However, petitioners should also be aware that the PTAB may not look favorably on second petitions that are no more than variations on a previously rejected theme. For example, in the recent decision on Unilever v. Procter & Gamble, IPR2014-00506 (Paper 17, July 7, 2014), the PTAB declined to institute inter partes review when it found that six of thirteen prior art references had been cited in an earlier petition. The Board decided to reject the petition under 35 U.S.C. §325(d) because “the same or substantially the same prior art was presented to the Office in the [earlier] proceeding.” The board also noted that Unilever had not presented any argument or evidence that the seven newly cited references were not known or available to it at the time of filing of the earlier petition.

About PostGrant-Counsel.com | Inter Partes Review, Reexam and other Challenges to Issued Patents

Pepper Hamilton's blog all about challenging and defending patents after issuance: inter partes review, post grant review, reexams & foreign oppositions.
This entry was posted in America Invents Act, Anticipation/Obvious, Covered Business Methods, Inter Partes Review, One-year Statutory Bar, Post Grant Review, PTAB Procedure, Trial Tactics, Uncategorized, USPTO and tagged , , , , , , , , , , . Bookmark the permalink.