Petitioner Unified filed a petition for IPR of 11 claims of a patent.  Unified acknowledged that the patent was already subject to three other petitions for IPR and that the Board had instituted trial on two of those three earlier petitions.  Both of the trials involved the same primary reference on which Unified relied for its petition.  The first trial involved 10 of the 11 claims raised in Unified’s petition, and the second involved all 11 claims.  Furthermore, the Board had already issued a written opinion on the first trial, holding the 10 challenged claims invalid.  That decision was awaiting appeal at the Federal Circuit.

The Board rejected Unified’s petition under 35 U.S.C. § 325(d) because instituting trial on Unified’s petition would inevitably waste time, effort, and resources.  If the Federal Circuit affirmed the Board’s prior invalidity decision, Unified’s invalidity arguments would be moot as to 10 of the 11 claims.  And even if the Federal Circuit reversed the Board’s decision, the Board would review each of the challenged claims in the second instituted trial.  If that second trial were to proceed to a final written decision, the Board would determine whether the 11 claims are unpatentable over the same primary reference raised in Unified’s petition.  Taking into consideration the efficient administration of the Office under 35 U.S.C. § 316(b), the Board declined to institute trial on Unified’s petition.

This decision illustrates that it may be difficult for follow-on petitioners to jump into the fray when other petitioners are already litigating the same prior art and arguments before the Board.

Informative Decision: Unified Patents, Inc. v. PersonalWeb Technologies, LLC, IPR2014-00702, Paper 13 (P.T.A.B. July 24, 2014)

Before Turner, Chang, and Zecher, Administrative Patent Judges