PTAB Exercises Discretion To Deny IPR Institution Due To ITC Investigation Despite Multiple Stayed District Court Cases
On March 18, 2022, the Patent Trial and Appeal Board of the United States Patent and Trademark Office exercised its discretion under 35 U.S.C. § 314(a) to deny institution of a petition for inter partes review filed by Google LLC challenging a patent asserted against it in an ITC investigation and a parallel district court case. Google LLC v. EcoFactor, Inc., IPR2021-01578, Paper 9 (PTAB Mar. 18, 2022). The PTAB’s denial relied primarily on the late stage of the ITC investigation.
PTAB Denies IPR Institution Due To Co-Pending ITC Investigation
On November 18, 2020, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) denied institution of a petition for inter partes review (IPR). Google LLC v. EcoFactor Inc., case no. IPR2020-00946 (PTAB Nov. 18, 2020). In its decision, the PTAB exercised its discretion under 35 U.S.C. § 314(a) to deny institution because of a co-pending investigation before the International Trade Commission (ITC) involving the challenged patent.
PTAB Institutes IPR Over Patent Owner’s Section 325(d) Argument That The Same Art And Arguments Were Already Considered By The Patent Office
On October 6, 2020, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) instituted an inter partes review (IPR) proceeding, rejecting Patent Owner’s argument that the PTAB should exercise its discretion under 35 U.S.C. § 325(d) to deny institution because the same prior art and arguments were before the Patent Office Examiner during original prosecution. Sony Interactive Entertainment LLC v. Bot M8, LLC, Case No. IPR2020-00726 (PTAB Oct. 6, 2020). In doing so, the PTAB agreed with Petitioner that the Examiner overlooked a reference’s teaching.
PTAB Institutes IPR, Despite Primary References Having Been Considered During Original Patent Prosecution
On May 22, 2020, the Patent Trial and Appeal Board (“PTAB”) of the U.S. Patent and Trademark Office issued a decision instituting inter partes review (“IPR”) over Patent Owner’s argument that the PTAB should exercise its discretion to deny institution because the IPR petition relied on several references that were considered by the patent examiner during prosecution of the application leading to the patent-at-issue. Medacta USA, Inc. v. RSB Spine, LLC, IPR Case No. 2020-00264, Paper 24 (PTAB May 22, 2020). The PTAB found that the examiner “erred in a manner material to the patentability of the challenged claims” by overlooking certain aspects of the prior art references.
PTAB Denies Customer’s “Follow-On” IPR Petition Based On Supplier’s Prior Petition
On October 3, 2019, the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office issued a Decision Denying Institution of Inter Partes Review (IPR) under 35 U.S.C. § 314(a). PayPal, Inc. v. IOENGINE LLC, IPR Case No. IPR2019-00884, Paper 22 (PTAB Oct. 3, 2019). The PTAB exercised its statutorily-authorized discretion to deny institution based primarily on a customer-supplier relationship between the instant petitioner and a prior petitioner.
PTAB Designates Precedential Two Additional Opinions Regarding Discretionary Denials Of IPR Institution Under Sections 314(a) And 325(d)
On August 2, 2019, the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office designated as precedential two Decisions on Institution. Valve Corp. v. Elecs. Scripts Prods. Inc., IPR Case Nos. IPR2019-00064, -00065, -00085, Paper 10 (PTAB May 1, 2019) (designated: Aug. 2, 2019); Becton, Dickinson & Co. v. B Braun Melsungen AG, Case No. IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (designated: Aug. 2, 2019). In Valve, the PTAB held that General Plastic factor 1—concerning discretionary denials under 35 U.S.C. § 314(a) for “follow-on” petitions—applied to a joined petitioner. In Becton, Dickinson, the PTAB delineated a list of factors to consider when determining whether to exercise its discretion to deny a petition under 35 U.S.C. § 325(d) where “the same or substantially the same prior art or arguments previously were presented to the Board.”