On April 13, 2017, a Patent Trial and Appeal Board (PTAB) panel denied institution of inter partes review (IPR) of patent claims that were the subject of a previously filed IPR by the same petitioner. The panel found that the petitioner’s strategy of waiting to receive the patent owner’s preliminary response and the PTAB’s institution decision for the first petition, and then morphing the petitioner’s subsequent challenge in view of that feedback, was unfair to the patent owner.

The patent owner filed its preliminary response to the first petition on May 23, 2016, and the PTAB issued its institution decision on August 15, 2016. The petitioner filed its second petition on October 7, 2016, asserting several of the same references against the same claims of the same patent. In denying institution of the second petition on grounds of fundamental fairness, the panel focused on several factors.

First, the petitioner knew of the prior art asserted in the second petition when it filed the first petition. Of the four references asserted in the second petition, three were also asserted in the first petition, and one was included in invalidity contentions filed just one day after the first petition. While not determinative, this weighed against institution of the second petition.  

Second, the panel focused on the elapsed time between the filing of each petition. The panel noted that, in waiting as long as it did, the petitioner had ample time to take advantage of the patent owner’s preliminary response and the PTAB’s institution decision in crafting the petitioner’s second petition. The panel noted that, in related district court proceedings, the petitioner indicated that taking advantage of the decision on institution for the first petition was the reason the petitioner delayed filing the second petition as long as it did. Moreover, the petitioner failed to offer any nonstrategic reasons for the delay in filing its second petition.

The panel also focused on how exactly the petitioner relied on feedback received on the first petition in crafting the second petition. For example, the decision on institution for the first petition noted deficiencies with respect to one reference. The petitioner then asserted a new reference to account for elements previously mapped to the deficient reference in its second petition. Further, where the decision on institution resulted in a favorable outcome for obviousness grounds involving two references, the petitioner expanded the challenged claims in the second petition in view of the same two references. Noting that the petitioner substantively shifted arguments presented in the second petition, the panel stated simply, “[w]e view Petitioner’s strategy—withholding additional challenges until receiving the Board’s feedback to help shape those challenges—as unfair to Patent Owner.”

Xactware Solutions, Inc., v. Eagle View Technologies, Inc. IPR2017-00025, Paper 9 (PTAB April 13, 2017).

[Baer (opinion), Moore, White]