Discretionary Denials Surge at the Patent Trial and Appeal Board

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The PTAB’s denial of Apple’s attempt to join Microsoft’s IPR suggests increased hurdles for copycat petitions.

TAKEAWAYS

  • Serial petitions will be heavily scrutinized and often denied using the General Plastic factors, even when the second petition seeks to join a previously instituted trial.
  • The PTO is considering promulgating rules governing discretionary denials, and sought public comments for such rules, (85 Reg. 66502) which were due on Dec. 3, 2020, published here.
  • The PTAB may use its discretion to deny “me-too” or “copycat” petitions seeking joinder in an already instituted proceeding by considering the General Plastic factors.

The year 2020 has been a difficult one for a number of reasons, but it has never been this difficult for petitioners before the PTAB. Institution denials have skyrocketed from 13 percent in 2012 to 44 percent in 2020. Of those denials, about 30 percent of them have been because the PTAB exercised its discretion under 35 U.S.C. §§ 314 and 325, nearly doubling 2019, and orders of magnitude higher than previous years. Among these cases, the status of serial, parallel, and now copycat petitions seem particularly called into question.

In Apple Inv. v. Uniloc 2017 LLC, IPR2020-00854 (October 28, 2020), designated precedential on December 4, 2020, the PTAB considered the General Plastic factors and denied Apple’s petition, despite determining that Apple’s petition presented a reasonable likelihood of prevailing on the challenge of at least one claim. After being served with a complaint alleging patent infringement, Apple filed a first petition that was denied institution because the evidence and arguments failed to substantively meet the reasonable likelihood threshold required for institution. After the one-year date (see 35 U.S.C. §315(b)) barring Apple from filing a petition, Microsoft filed a petition for inter partes review (IPR) of the same Uniloc patent, and the PTAB instituted trial. Apple then filed a me-too petition along with a motion for joinder, seeking to join the Microsoft-initiated IPR.

Uniloc opposed Apple’s joinder, contending that Apple’s second petition should be denied under General Plastic (General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at 16 (PTAB Sept. 6, 2017) (precedential as to § II.B.4.i)), because Apple was using the joinder procedure as an “end run around its failed petition.” The PTAB considered the General Plastic factors and denied institution, despite finding Apple’s petition had presented a reasonable likelihood of prevailing on the challenge of at least one claim.

The General Plastic factors are as follows:

  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 Board’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 Board; and
  7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final determination not later than 1 year after the date on which the Director notices institution of review.

(General Plastic, Paper 19 at 9−10.)

Finding factors 1-6 weighing in favor of denying institution, and factor 7 neutral, the PTAB used its discretion under 35 U.S.C. §114(a) and denied Apple’s petition. The underlying theme in the PTAB’s decision was summarized as follows: “By way of summary, Apple failed in its first attempt to challenge the ’088 patent, and, over a year later and subject to a § 315(b) bar, seeks to join an ongoing proceeding challenging that same patent.”

This precedential decision bookends the calendar year of 2020, which included a series of denial decisions made precedential (or informative) by the PTAB, and it exemplifies the tumultuous year petitioner’s have faced before the tribunal.

The PTAB designated six discretionary institution decisions precedential, and three informative in 2020, in which the PTAB either denied institution or granted trial in proceedings involving the PTAB’s discretionary authority under 35 U.S.C. §§314(a) 315(a), 315(d), and 325(d). One of those decisions, Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 (May 13, 2020), was challenged in the Northern District of California by a group of tech companies, including the petitioner Apple: Apple Inc. et al. v. Iancu, 5:20-cv-06128 (N.D. Ca.), filed in September of this year.

The PTAB recently published a proposal seeking public comments on possible rulemaking governing these discretionary denials (85 Fed. Reg. 66502). The PTO stated it was considering promulgating rules based on the framework of the guidance provided in the precedential and informative decisions involving discretionary denials, and the guidance provided in the Consolidated Trial Practice Guide. Over 800 comments were presented to the PTAB, which is indicative of the importance of these issues.

The stage has been set for 2021: will the PTAB promulgate rules providing some degree of certainty to petitioners with respect to its discretionary authority to deny institution of a petition that otherwise satisfies the statutory requirements? What we do know now from the Apple v. Uniloc precedential decision, however, is that a petitioner who previously challenged a patent will most likely not be able to join an instituted proceeding by a different petitioner who subsequently filed a petition challenging the same patent.

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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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