A Rare Rehearing by the PTAB

Photo of John P. Isacson
John P. Isacson

Samsung Electronics Co., Ltd. v. NuCurrent, Inc., IPR2019-00860 (February 7, 2020) (Paper No. 15).

Samsung filed two IPR petitions against NuCurrent’s U.S. Patent No. 8,680,960, which related to a multi-layer-multi-turn structure for high efficiency inductors. The first petition was IPR2019-00858 based upon the Lee reference, and the second petition was IPR2019-00860 based upon the Partovi reference. Both petitions challenged the same claims of the ‘960 patent. The ‘858 IPR was instituted, but the ‘860 IPR was not instituted due to redundancy.

Following the filing of the IPR petitions and preliminary responses, the 2019 Trial Practice Guide update was published. The 2019 update stated that petitioners must justify multiple petitions in the first instance, which Samsung did not do. The PTAB, however, was aware that the petitions were filed prior to the publication of the 2019 update.

During the rehearing briefing, Samsung argued that “filing two separate IPR petitions allowed each asserted ground of unpatentability to be presented in a more clear and comprehensive manner.” Paper No. 15 at 10-11. Samsung further argued that there was “almost no overlap” between the Lee-based grounds and the Partovi-based grounds. Id. at 11. The PTAB was persuaded and instituted the ‘860 petition.