Following the United States Patent and Trademark Office’s (USPTO) recent wave of decisions designated precedential or informative discussed here and here, the USPTO added two more decisions to the list last week:  Valve Corp. v. Elec. Scripting Prods. Inc., Case IPR2019-00062 (PTAB Apr. 2, 2019) and NHK Spring Co. Ltd. v. Intri-Plex Techs. Inc., Case IPR2018-00752 (PTAB Sept. 12, 2018). Both decisions concern the Patent Trial and Appeal Board’s (PTAB) discretion to deny institution of petitions.

Valve Corp. v. Elec. Scripting Prods. Inc., Case IPR2019-00062 (PTAB Apr. 2, 2019) (Paper No. 11) (precedential)

In Valve Corp., the PTAB panel, which included Director Iancu, considered whether to deny institution under § 314(a) by relying on the non-exhaustive General Plastic factors. Valve Corp., slip op. at 2 (citing General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, Case IPR2016-01357 (PTAB Sept. 6, 2017) (Paper No. 19) (precedential)). Those factors follow:

1. Whether the same petitioner previously filed a petition directed to the same claims of the same patent
2. Whether at the time of filing of the first petition the petitioner knew of the prior art asserted in the second petition or should have known of it
3. Whether at the time of filing of the second petition the petitioner already received the patent owner’s preliminary response to the first petition or received the PTAB’s decision on whether to institute review in the first petition
4. The length of time that elapsed between the time the petitioner learned of the prior art asserted in the second petition and the filing of the second petition
5. Whether the petitioner provides adequate explanation for the time elapsed between the filings of multiple petitions directed to the same claims of the same patent
6. The finite resources of the PTAB
7. The requirement under 35 U.S.C. § 316(a)(11) to issue a final determination not later than one year after the date on which the Director notices institution of review

The PTAB clarified that these factors apply not only to serial petitions filed by the same petitioner, but they also apply to petitions filed by different petitioners. The PTAB stated:

Although Valve did not file the petition in the 1031 IPR … our application of the General Plastic factors is not limited solely to instances when multiple petitions are filed by the same petitioner.  Rather, when different petitioners challenge the same patent, we consider any relationship between those petitioners when weighting the General Plastic factors.

In this case, HTC Corporation and HTC America, Inc. previously filed a petition seeking review of the same patent at issue here, which was denied. That prior petition challenged the same patent claims, and the second petition relied on prior art references that the petitioner knew or should have known about at the time of filing the first petition.  Moreover, HTC and Valve Corporation were co-defendants in the parallel district court litigation.  Therefore, the General Plastic factors weighed in favor of denying institution. And because Valve Corporation waited until after the institution decision in the first IPR and before filing three petitions on the same patent claims, institution denial was further justified based on an inefficient use of the PTAB’s finite resources. This decision exemplifies why potential petitioners should monitor similarly situated petitions—particularly when those were filed by a co-defendant—and carefully assess the arguments and timing of any later-filed petitions to avoid institution denial under § 314(a).

NHK Spring Co. Ltd. v. Intri-Plex Techs. Inc., Case IPR2018-00752 (PTAB Sept. 12, 2018) (Paper No. 8) (precedential)

In NHK Spring, the PTAB exercised its discretion to deny institution under both §§ 314(a) and 325(d).  The PTAB denied institution per § 325(d) because the petitioner relied on “the same or substantially the same prior art or arguments previously [ ] presented to the Office.” That determination is evaluated using a set of non-exclusive factors from Becton, Dickinson & Co. v. B. Braun Melsungen AG, Case IPR2017-01586, slip. Op. at 17-18 (PTAB Dec. 15, 2017) (Paper No. 8) (informative):

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 petitioner relies on the prior art or patent owner distinguishes the prior art
5. Whether petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art
6. The extent to which additional evidence and facts presented in the petition warrant reconsideration of prior art or arguments

The PTAB concluded that all factors weighed in favor of the patent owner and its decision to deny review under § 325(d) because the petitioner used the same prior art references for similar rationales as the examiner had during examination. Although the petitioner argued that it was relying on one reference in a new way as well as an expert declaration submitted with the petition, the PTAB was not persuaded.

The PTAB also used its discretion under § 314(a) to deny institution, finding that it would be an “inefficient use of Board resources” because the petitioner had asserted the same prior art references and invalidity contentions in the parallel district court proceeding that was “nearing its final stages.” For this reason, petitioners should consider and address the timeline of any parallel district court proceeding as well as any overlapping arguments made previously at either the district court or during prosecution when filing petitions.

Conclusion

Both NHK Spring and Valve Corp. demonstrate that petitioners need to do their due diligence prior to filing a petition to assure the petition will be unaffected by arguments or evidence from prior examination, district court proceedings, or other petitioners.

When filing petitions, petitioners must consider the following:

1. Other petitions filed—particularly by co-defendants
2. Timing of any co-pending district court action and the invalidity arguments made in that forum
3. Arguments made during prosecution

If any of these implicate institution denial under §§ 314 and 325, the petitioner should explain why the PTAB should nevertheless take the case.